The Madrid Protocol Trademark Conflict
You register your trademark in Canada. Then, using the Madrid Protocol, you designate the U.S. as a target country in your international application. All good, right?
Not necessarily.
If someone else has already filed a similar trademark in the U.S., your application can still get blocked, even if you were first in Canada.
Here’s why, and what to do next.
How It Works Under U.S. Law + The Madrid Protocol
Your Canadian registration is your “home base.” It lets you file internationally through the Madrid Protocol and designate the U.S. as a target country.
But in the U.S., the USPTO treats Madrid-based applications just like any other domestic filing. That means:
- The USPTO will run a full conflict check
- If there’s a pending or registered mark that’s confusingly similar, you’ll get hit with an Office Action
- If someone filed before your U.S. designation, they have priority
Yes, even if you registered first in Canada.
What You Can Do If You Get Blocked
If the USPTO refuses your U.S. extension due to likelihood of confusion (Section 2(d) of the Lanham Act), here are your options:
- Respond to the Office Action — Argue your mark is different in goods, audience, or appearance
- Negotiate a coexistence agreement — If both marks can peacefully exist
- Monitor or oppose their U.S. application — If they haven’t registered yet and your rights are stronger
- Adjust your application — Modify your mark’s design, scope, or classes
Madrid is powerful, but not a shortcut. Each country gets to apply its own rules. And in the U.S., filing dates rule the road.
The Takeaway
Registering in Canada does not give you priority in the U.S.
If another party files a similar U.S. mark before your Madrid designation is examined, their application can block yours.
At Zamani Thomas Legal, we help creators and businesses on both sides of the border manage these exact situations, especially when protecting assets like The Creative Shield or The Creative Docket across North America.
Book a Creative Consult if you’re filing cross-border and want to avoid setbacks, or if you need a coexistence agreement, U.S. filing strategy, or clearance search done right the first time.