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[Harry Kim]

I'm intending to use a US Federal Trademark for business in Canada. But there's a similar trademark already registered under Canada. Can I still go ahead with the Canadian business if my disclaimers on all materials claim 'US Federal Trademark'? Alternatively what can be done?

[JSonnabend]

Long story short, if the Canadian trademark is confusingly similar to yours, you will not be able to use your trademark in Canada even if you have a US registration.  "Disclaimers" are of no consequence in virtually every instance.  Furthermore, the Canadian mark owners may be able to stop you from registering and/or using your mark in the US, in certain circumstances.

- Jeff

[Mex]

A company owns a trademark in the US that I have been using since 2004 in Canada. We operate in categories that don't compete. Is it an issue for me to
- continue operating under the name in Canada
- operate under the same non-competing name in the US?

mex1121@gmail.com

[Isaac]

There is no way to answer this question without knowing the involved marks and businesses.   If your mark is confusingly similar to the US mark you will have problems.  The fact that the involved industries do not compete is not enough information to answer your question.

[Mex]

Thanks. But can I continue using the mark in Canada? Does a US trademark prevent me from using the trademark name in Canada even though the US company does not own the trademark in Canada?

[JSonnabend]

Isaac is correct that you may have trouble using your mark in the U.S., but your senior foreign use may be enough under recent precedent to trump the rights of the U.S. mark holder.

As far as your continuing use of your mark in Canada, you shouldn't have any problem there, but you'd need to speak with a Canadian TM attorney to make sure.  None of us here (I believe) can claim to be particularly knoweledgable about Canadian TM law.

- Jeff