Your U.S. Counterpart for Canadian Clients
Votre homologue américain pour vos clients canadiens.
Canadian trademark firms send more U.S. work than firms from any other country we serve. We act as U.S. attorney of record for your clients, report to you rather than to the client, and send U.S.-originated Canadian work back to you.
Trademark activity in Canada and at the USPTO
CIPO recorded 134,699 trademark class counts in 2024, down 23% from 2019. Canadian owners filed 45,963 U.S. applications from 2021 to 2025, 6% of them through Madrid.
Trademark filings at CIPO
Class count in applications filed at CIPO, direct and via Madrid, by applicant residence.
View data table
| Year | Total | Resident | Non-resident |
|---|---|---|---|
| 2019 | 174,284 | 91,856 | 82,428 |
| 2020 | 147,228 | 62,559 | 84,669 |
| 2021 | 175,789 | 66,458 | 109,331 |
| 2022 | 153,426 | 53,907 | 99,519 |
| 2023 | 142,605 | 53,626 | 88,979 |
| 2024 | 134,699 | 46,808 | 87,891 |
U.S. applications filed by Canadian owners
USPTO applications per filing year from owners with an address in Canada. The 2026 bar covers January through September.
View data table
| Filing year | Filed | Registered to date | Via Madrid |
|---|---|---|---|
| 2021 | 11,097 | 6,080 | 579 |
| 2022 | 9,512 | 5,052 | 523 |
| 2023 | 8,759 | 4,583 | 472 |
| 2024 | 8,735 | 4,140 | 519 |
| 2025 | 7,860 | 2,389 | 505 |
| 2026 (Jan.–Sept.) | 5,655 | 293 | 384 |
Madrid traffic between Canada and the U.S.
Designations recorded by WIPO each year: Canadian holders designating the United States, and U.S. holders designating Canada.
From 2020 to 2025, U.S. holders designated Canada about 15 times as often as Canadian holders designated the United States.
View data table
| Year | U.S. designated by Canadian holders | Canada designated by U.S. holders | All designations of Canada | International applications filed through CIPO | Provisional refusals issued by CIPO |
|---|---|---|---|---|---|
| 2020 | 356 | 6,077 | 21,078 | 570 | 1,114 |
| 2021 | 593 | 8,516 | 26,075 | 936 | 15,176 |
| 2022 | 524 | 8,002 | 24,410 | 783 | 18,909 |
| 2023 | 473 | 6,903 | 22,025 | 760 | 20,420 |
| 2024 | 516 | 7,032 | 22,020 | 773 | 20,501 |
| 2025 | 501 | 6,938 | 21,957 | 797 | 22,158 |
Madrid designations received by CIPO
All designations of Canada in international applications and subsequent designations, from every origin.
In 2025, U.S. holders made 32% of the 21,957 designations of Canada. CIPO issued 22,158 provisional refusals that year.
How we counted. National-office figures are class counts (applications multiplied by the classes they name) from the WIPO IP Statistics Data Center, May 2026 update, covering direct and Madrid filings. Madrid figures are WIPO counts by date of receipt at the International Bureau through 2025. USPTO figures count applications by filing date where an owner's address is in Canada, from USPTO records retrieved October 27, 2026.
The U.S.-counsel rule and Canadian agents
Since August 3, 2019, an applicant or registrant domiciled outside the United States must be represented before the USPTO by an attorney licensed in a U.S. state. The rule took effect a few weeks after Canada joined the Madrid Protocol on June 17, 2019.
The USPTO still recognizes some Canadian trademark attorneys and agents under 37 C.F.R. § 11.14(c), but only to represent parties located in Canada, and only after recognition by the USPTO's Office of Enrollment and Discipline. A recognized agent cannot act for your client's U.S. subsidiary, a non-Canadian parent, or a co-owner located elsewhere, and cannot handle U.S. litigation, Customs recordation follow-up, or Amazon enforcement. Most Canadian firms therefore appoint U.S. counsel for every U.S. matter.
What this means for your firm
- You keep the client relationship and the strategy
- We are attorney of record and correspondence address at the USPTO
- Every USPTO notice comes to you with our recommendation
- We send U.S.-originated work in Canada back to you
What we handle for your Canadian clients
The full U.S. life of a mark, from the first filing to enforcement, under your instructions.
Direct U.S. filings
Use, intent-to-use, Section 44(e) home-registration, and Section 44(d) priority applications.
Madrid refusals
Responses to USPTO provisional refusals of designations of the United States.
Office actions
Arguments and amendments on likelihood of confusion, descriptiveness, specimens, and identification.
TTAB matters
Oppositions, cancellations, ex parte appeals, letters of protest, and expungement or reexamination petitions.
Maintenance
Section 8 and Section 71 declarations, Section 15 affidavits, Section 9 renewals, and docketing every U.S. deadline.
Recordals
Assignments, mergers, and name changes recorded with the USPTO Assignment Recordation Branch.
Enforcement
Cease-and-desist letters, U.S. Customs recordation, Amazon Brand Registry, and coordination with litigation counsel.
Built for the instructing firm
- Conflict checkWe clear conflicts before any substantive work, usually within one business day.
- Associate agreementA short written agreement sets reporting, billing, and client-contact rules.
- InstructionsBy email, in English, or French through a translator. We confirm receipt and the deadline the same day.
- ReportingWe report to your firm, not to your client, unless you ask us to copy the client.
- FeesFixed fees for standard actions, invoiced in U.S. dollars with wire instructions; government fees at cost.
Where U.S. filings from Canada go wrong
The issues we see most often in U.S. matters sent by Canadian firms, and how we deal with each.
Canadian goods and services wording
CIPO's Goods and Services Manual and the USPTO's ID Manual differ. Terms CIPO accepts, such as general software or retail-store descriptions, often draw indefiniteness refusals at the USPTO, on both Madrid designations and direct filings.
We rewrite the identification in U.S. form before the Madrid application leaves CIPO, or before a direct filing.
Registrations without U.S. use
Many Canadian clients register in the U.S. under Section 44(e) or Madrid before selling in the U.S. The Section 8 or Section 71 declaration between years 5 and 6 then fails, and the USPTO's audit program removes goods that are not in use.
We docket the use deadline from the start and ask for U.S. use evidence a year before it falls due.
Section 44(d) priority used without a U.S. plan
Canadian applicants claimed Section 44(d) priority in about a third of their 2021–2025 U.S. applications. A priority claim secures the date, but the U.S. application still needs a valid basis and a plan for U.S. use.
We confirm the basis and the U.S. launch plan when the priority claim is filed.
Ownership across the border
Brands are often used in the U.S. by a U.S. subsidiary while the Canadian parent files. If the parent does not control the nature and quality of the goods, the application can be challenged.
We document the licence or control arrangement before filing.
Central attack on Madrid designations
For five years a U.S. designation depends on the Canadian basic application or registration. An opposition at CIPO that narrows the basic filing narrows the U.S. designation too.
Where the CIPO filing is contested, we recommend a direct U.S. filing or prepare for transformation.
Work flows both ways
U.S. brand owners designated Canada in about 7,000 Madrid filings a year from 2021 to 2025, and CIPO now issues more than 20,000 provisional refusals a year. When our U.S. clients need Canadian prosecution, refusal responses, or opposition work, we instruct Canadian counsel, and we refer it to the firms that send us U.S. work.
We do not practice Canadian law. When a U.S. client needs protection in Canada, the matter goes to Canadian counsel, and we report the result to our client.
What to send with an instruction
- Client name, entity type, and country of organization
- Full address of domicile (street address, not a P.O. box)
- The mark as filed at home, with any color claim and translation
- Home filing or registration number and date (for priority or Section 44(e))
- Goods and services, ideally already in U.S. ID Manual wording
- U.S. use dates and a specimen, if the client already sells in the U.S.
- For Madrid refusals: the WIPO notification and the USPTO refusal
- The response or filing deadline you are working to
Frequently asked questions
Can a Canadian trademark agent still file at the USPTO?
Only if the USPTO's Office of Enrollment and Discipline has recognized the agent under 37 C.F.R. § 11.14(c), and then only for parties located in Canada. Most Canadian firms appoint a U.S. attorney instead, because recognition does not cover U.S. subsidiaries, foreign parents, TTAB litigation, or court enforcement.
Do you respond to provisional refusals of Canadian Madrid designations?
Yes. A provisional refusal of a designation of the United States must be answered by a U.S.-licensed attorney for a Canadian-domiciled holder. We review the refusal, recommend a response, and file it through TEAS.
How are your fees structured for associate work?
Standard actions, such as a new application, a response to a routine refusal, or a Section 71 declaration, carry fixed professional fees, listed in our associate fee schedule. Contested work is billed by the hour or on a quoted budget. Government fees are passed through at cost, and invoices are in U.S. dollars.
How quickly do you act on an instruction?
We confirm receipt and the deadline the same business day and clear conflicts before substantive work. For urgent deadlines, tell us the date in your first email.
Can you work in French?
Our attorneys work in English and Spanish. French correspondence and documents are handled through a qualified translator, and we report to you in English unless you ask otherwise.
Will you contact our client directly?
No, unless you ask us to. We report to the instructing firm and copy the client only on your instruction.
Request our associate fee schedule
Our schedule lists fixed fees for the U.S. actions Canadian firms send most often, with our instruction checklist and a short guide to the most common USPTO refusals of filings from abroad.
- Direct USPTO applications
- Madrid provisional refusals
- TTAB oppositions and cancellations
- Section 8 and Section 71 declarations