By: Dana Lucas

This article is the first in a three-part series on IP for Canadian businesses entering the US market. Part 1 covers registration. Part 2 addresses enforcement. Part 3 explores long-term IP strategy.

Canada and the United States (US) share one of the most integrated trade relationships, exchanging more than CAD $2 billion in goods and services every single day and making them among the world’s largest trading partners. For Canadian businesses expanding into the US, this creates enormous opportunity, but also a frequent and costly misunderstanding: that intellectual property (IP) protection automatically carries across the border

It does not.

IP rights are territorial. A trademark registered in Canada, a Canadian patent, or a copyright protected under Canadian law does not automatically extend into the US. Once you begin selling, manufacturing, licensing, or distributing products in the US market, even selling products over the internet, you are operating in a separate legal system with separate IP rights, rules, and enforcement mechanisms.

Understanding that shift early is essential to avoiding preventable exposure.

Your Canadian IP Stops at the Border

“Intellectual property is a valuable asset that can support your business expansion abroad. A Canadian patent, trademark or industrial design does not secure your rights outside of Canada.” – Canadian Intellectual Property Office

IP rights are granted and enforced within national boundaries. A registration with the Canadian Intellectual Property Office (CIPO) protects your rights in Canada only. The moment your business activity extends into the US, you must rely on US IP systems for protection. This includes:

• the US Patent and Trademark Office (USPTO) for patents and trademarks;
• the US Copyright Office for copyright registration; and
• US federal courts for enforcement.

The good news is that the Canadian and US systems are broadly similar. Both protect core forms of IP, such as patents, trademarks, and copyright, and the underlying legal structure will feel familiar to Canadian businesses. That said, the differences are still important and small variations in rules around registration, timing, and enforcement can have a big impact on how well your assets are protected once you enter the US market. Understanding those differences early helps avoid gaps in protection that only become visible when a problem arises.

Trademarks

In the US, trademark rights are governed by the USPTO. Like Canada, the US follows a “first-to-use” system where whoever used the trademark first in the US marketplace owns the rights to it, even without registration. However, registration still matters and can matter significantly.

A registered trademark offers several important advantages. It is generally easier to enforce, provides stronger legal protections and presumptions of ownership, and can be recorded with US Customs and Border Protection (CBP) to help block counterfeit goods from entering the US. Registration also creates a public record of your rights, which can discourage others from adopting a confusingly similar trademark.

It is also important to note that trademark rights depend on continued commercial use. If a trademark is not actively used in the marketplace, the registration may become vulnerable to challenges or cancellation for non-use. Further, registration requires use in interstate commerce; this is a structural difference from Canada’s system, which has no such requirement.

Patents

In the US, patents are also granted by the USPTO. Canadian businesses will most commonly encounter three main types of patents:

Patent Type	What It Protects	Typical Term
Utility patent	New and useful inventions, processes, machines, or compositions	20 years from the application date
Design patent	New and original ornamental product designs	15 years from the grant date
Plant patent	New asexually reproduced plant varieties	20 years from the application date

While the USPTO also recognizes certain specialized patent mechanisms, such as reissue patents, these are less commonly encountered by most businesses and typically arise in more technical or procedural circumstances.

The US operates a “first-inventor-to-file” system, where the first person to file an application on an invention gets the patent. Filing promptly is important.

If an inventor publicly discloses their invention before filing, there is a one-year grace period in which they can still apply for a US patent. This mirrors Canada’s approach, but it is critical to remember that most other countries do not offer any grace period. If you plan to seek protection in multiple markets, file first, disclose second.

The Patent Cooperation Treaty (PCT) allows inventors to file a single “international” application that preserves their rights in a large number of countries simultaneously. This is particularly useful for businesses with ambitions beyond just Canada and the US. While the USPTO still makes the final decision on US patent grants, the PCT buys you time and a consolidated filing process.

In the US, applicants can also file a provisional patent application (filed without a formal claim or oath); this secures an early filing date and 12 months of “Patent Pending” status before a non-provisional or PCT application is due.

Copyright

Copyright protects original creative works, including literary, dramatic, musical, artistic, and software-based works. As in Canada, copyright protection in the US arises automatically once an original work is created, meaning registration is not required to own copyright. Generally, copyright protection lasts for the life of the author plus 70 years.

That said, registration with the US Copyright Office becomes critically important when enforcement is necessary. In the US, a copyright owner cannot commence an infringement lawsuit without first registering the copyright. For businesses distributing creative content, software, marketing materials, or other copyrightable works in the US, registration is therefore often an enforcement necessity rather than merely an administrative formality.

A Practical Pre-Entry Approach

Before entering the US market, businesses should take a structured approach:

• identify existing IP assets (trademarks, patents, copyright, trade secrets);
• map where business activity will occur (sales, manufacturing, licensing);
• assess exposure risks in the US market (third-party infringement, counterfeiters, enforcement costs);
• determine which assets require immediate US protection; and
• align IP filings with commercial timelines.

Securing IP in the US is only one part of the equation, however. The real challenge begins when those rights are challenged, copied, or infringed and you need to enforce them. In Part 2 of this series, we explore how Canadian businesses can respond when IP rights are violated in the US market.

How Procido Can Help

If your organization is considering US market entry and wants to ensure your IP assets are properly protected before you cross the border, Procido LLP would be pleased to assist. We can help you identify your existing IP, assess your exposure in the US market, and determine the right registration strategy for your business. Our connections with US and international colleagues mean that strategy can travel with you as your business grows. Feel free to reach out to Procido LLP’s IP and Technology Practice Group with any inquiries at dana.lucas@procido.com.

Disclaimer

This publication is provided as an information service and may include items reported from other sources. We do not warrant its accuracy. This information is not meant as legal opinion or advice. Contact Procido LLP (www.procido.com) if you require legal advice on the topics discussed in this article.