United States: Harmonizing Trademark Laws: Changes At The Heart Of The USMCA

Last Updated: November 1 2018
Article by Roberta L. Horton

The 1994 North American Free Trade Agreement (NAFTA), long in need of reform according to some, is receiving an overhaul. The current Administration, Mexico and Canada have negotiated a new trilateral agreement. Hailed as a "21st Century, high standard new agreement to support mutually beneficial trade leading to freer, fairer markets, and to robust economic growth in the region,"1 the new pact is entitled the "United States-Mexico-Canada Agreement" (USMCA or the Trade Agreement).

Effectively NAFTA 2.0, the new pact includes some key updates, including to the treaty's intellectual property (IP) provisions. Among other things, these provisions address the member countries' trademark and domain name laws.2 Generally speaking, USMCA's trademark provisions aim to enhance protection for rights holders.

The USMCA has received generally favorable reviews. Specifically, the Industry Trade Advisory Committee on Intellectual Property Rights (ITAC-13), concluded that the USMCA furthers US economic interests.3 ITAC's report provides a useful perspective on key IP provisions of the Trade Agreement and the agreement's potential impact on US trade. Although the United States, Mexico and Canada have wrapped up talks on the new agreement, it has not yet been ratified or signed.

Key trademark and domain name provisions of the USMCA include:

Type of Marks Registrable Article 20.C.1

The agreement embraces certain intangibles, namely, sound and scent. It states that the parties shall not reject marks for registration if they are sounds in Article 20.C.1. This clause is in line with US trademark registration practice. The US Patent and Trademark Office (USPTO) has long issued registrations for sound marks when appropriate. Examples of such registrations include Metro-Goldwyn-Mayer Lion Corp.'s famous roaring lion sound (US Registration No. 1,395,550) and Intel Corporation's five-tone progression (US Registration No. 2,315,261).

Article 20.C.1 further encourages, but does not mandate the registrability of scent marks, stating only that the parties "shall make best efforts" to register such marks. The USMCA offers no explanation for treating sound and scent marks differently and indeed, the USPTO generally does not do so; it issues registrations also for trademarks distinguishing source by scent. See, e.g., US Registration Nos. 4,618,936 (registration for flowery musk scent for retail store services held by Verizon Wireless). Indeed, the ITAC Report states that it would be preferable if the Trade Agreement did require protection of scent marks.4

The member countries do accord protection now for sound marks, and Mexico, also, for scents. The Canadian Intellectual Property Office (CIPO) started accepting applications for registration of sound trademarks as of March 28, 2012. Under the newly-enacted Mexican Industrial Property Law, non-visible signs such as smell marks and sound marks, as well as certain animated marks such as holograms, are protected. This decree has been in force since August 10, 2018.

Use of Identical or Similar Marks Article 20.C.3

Article 20.C.3 of the USMCA, using essentially the same language as in the US-Korea Free Trade Agreement (KORUS FTA),5 states that a trademark owner has the exclusive right to prevent third parties from using the same or similar marks for goods or services that would result in a likelihood of confusion. This mirrors a bedrock principle of US trademark law, i.e., a junior user may not lawfully adopt a mark likely to cause public confusion as to source or sponsorship with the senior user's trademark.6

The same article, however, also states that "[i]n the case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed." This language potentially affords trademark owners broader protection than does U.S. trademark law. As one noted authority observes: "The degree of similarity of the marks needed to prove likely confusion will vary with the difference in the goods and services of the parties. Where the goods and services are directly competitive, the degree of similarity required to prove a likelihood of confusion is less than in the case of dissimilar products." 4 McCarthy on Trademarks and Unfair Competition, §23.20.50 (5th ed. September 2018). The same authority notes, however, that US law has not adopted the literal standard of presuming confusion where the parties' marks and goods are the same, and the courts still employ a multi-factor test, although in practice, these factors loom large in a likelihood of confusion analysis and a likelihood of confusion is frequently found in such instances. Id. Interestingly, however, the ITAC Report endorses the principle that identical marks, for use on similar goods or services, should be presumed confusingly similar.7

Notably, in the United States, two famous marks can coexist, including on the USPTO Register, for markedly different goods. A case in point is the mark DELTA®, owned and used by two distinct companies for distinct products and services, namely, faucets8 and airline transport services.9

Well-Known Marks Article 20.C.5

The USMCA includes particular measures to protect "well-known" trademarks, mandating that: a mark need not be registered to be recognized as "well-known"; that the reputation of the mark need not extend beyond the niche sector of the public normally dealing with the goods or services with which the mark is used for that mark to be "well-known"; and that the Paris Convention, Article 6bis should apply (this article accords special protection to well-known marks, even against third-party use on goods and services not identical to a trademark owner's goods or services). The ITAC applauds this heightened protection for well-known marks in view of their frequent infringement.10

Classification System for Marks 20.C.8

Article 20.C.8 mandates that member countries employ a trademark classification system consistent with the Nice Agreement,11 which requires use of a numerical system categorizing goods and services by type. While not a definitive means of indicating likelihood of confusion (the relevant article states that goods or services may not be considered similar simply because they are in the same class), the classification system provides a meaningful way to organize and characterize goods and services that are the subject of member states' applications and registrations.

This is not an issue for the United States and Mexico, both of which already use the Nice System, with Mexico mandating use of the system in August of this year. Although Canada does not strictly adhere to the Nice System, it recommends that applicants use the system. Use of the Nice classification system is slated to be a requirement in Canada next year.12

Domain Names Article 20.C.11

Key provisions of the USMCA's domain name Article include the following:

  • The USMCA pertains only to the member parties' country-code top level domain names, i.e., the portion of domain names to the right of the "dot" that symbolize the countries, ".us", "ca", and ".mx". For this reason alone, the USMCA domain name provisions are limiting, as many of the countries' nationals might choose to register domain names using such popular top level domain names such as ".com", "org" and "biz"—all of which would be outside the reach of the USMCA.
  • The USMCA requires the parties to adopt a domain name dispute resolution system for their own country-code top level domains modelled along the same lines as ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP) or a system that is "fair and equitable" (without specifying particular procedures).
  • In addition, the USMCA states that "appropriate remedies" should be available at least where a registrant holds "with a bad faith intent to profit", a domain name identical or confusingly similar to a trademark.

Although the Trade Agreement's recommendation that member countries adopt the UDRP is a positive measure, the domain name Article suffers from certain flaws. First, member countries can substitute, for the UDRP, a vague "fair and equitable" system for adjudicating country-code disputes. More importantly, as the ITAC Report emphasizes,13 the domain name Article evidently requires that trademark owners prove a bad faith intent to profit by the cybersquatter to prevail. This is a more strict standard than required under the UDRP, which only mandates that the cybersquatter register and use the domain name in bad faith—whether or not it intends to "profit" from that use.14 Conversely, the domain name Article does not contemplate rulings for domain name registrants if they can show legitimate rights or interests in a domain name, as does the UDRP. In short, the domain name Article does not presently mirror the UDRP but should be revised to do so.

Geographical Indications (GIs) Article 20 Section E

GIs, protected widely in Europe, are designations used on products with a specific geographical origin that have characteristics attributable to that origin. Examples include "Idaho" for potatoes produced in Idaho; "Parma Ham" for prosciutto manufactured in the Parma region of Italy according to certain Italian laws, and "Roquefort" for a kind of cheese sourced from the Roquefort caves in France. Notably, US law protects geographic marks more narrowly than do the laws of many other countries; these designations are only protected and registered under US law if they serve as "certification marks", certifying the geographic origins of a third party's products, or collective membership marks (owned by an organization and used by members to identify themselves with a certain geographic origin), or geographic trademarks. Thus, for example, while IDAHO®, PARMA HAM® and ROQUEFORT® cheese are registered in the United States, they are registered as "certification marks" under US trademark law.15

The United States' concern with broad protection for GIs is, at least in part, economic. The worry is that US goods bearing a generic geographical name—not protected in this country, but recognized as a GI abroad—would be barred from exportation under that generic geographical name. The USMCA offers some, albeit incomplete, measures to address these concerns:

  • Whatever procedures the USMCA parties use, the USMCA requires them to include means to challenge applications for GI protection and cancel the GI protection, including, pursuant to Article 20.E.3(c), allowing challenges on the basis that the geographical indication is a term "customary in common language as the common name" for the goods in the party's territory.
  • In addition, under the USMCA, a trademark owner could successfully challenge the establishment of a new GI if it would cause confusion with a pre-existing trademark right.
  • The pact also helpfully includes guidelines for determining when a term is "customary in the common language". See Article 20:E.4.

Although ITAC generally praises the extensive GI section for its "transparency",16 and measures to "mitigate against the inappropriate future registration of unwarranted GIs",17 it also laments that the USMCA "regrettably does not fully preserve US market access opportunities" and cautions that work needs to be done to preserve access to markets abroad.18

The ITAC Report advises monitoring to ensure that GIs reflecting generic terms are not registered, citing Mexico's practice this year of registering several European Union GIs, although such terms were clearly in common usage in Mexico.19 For their part, both Mexico and Canada have moved or are moving to a system of protecting GIs that reflects the European Union's system, and is more expansive than the US certification and collective mark system. Specifically, Mexico previously recognized GI protection on a sui generis basis, and now, pursuant to the EU-Mexico Trade Agreement that became effective earlier this year, additionally recognizes GIs equivalent to how they are recognized in Europe. Canada has negotiated the EU-Canada Comprehensive Economic and Trade Agreement with the EU, although it has not yet been implemented. Under this agreement, too, Canada anticipates effecting a procedure for establishing GIs akin to the EU procedure.

*Erin Soyoung Park contributed to this Advisory. Erin is a Foreign Attorney (admitted only in the Republic of Korea; not engaged in the practice of law in the District of Columbia) in the International Arbitration - International Trade practice group. Erin received her LL.M. with distinction from the University of Pennsylvania Law School, and the Wharton Business and Law Certificate from the Wharton School in 2018, and her J.D. with honors from Korea University School of Law in 2016. Prior to joining Arnold & Porter, Erin was an attorney at Cho & Partners in Seoul, and she has experience in litigation and transactions regarding intellectual property rights, unfair competition, and license and distribution agreements.


1. USMCA, Preamble.

2. The USMCA also addresses these subject areas: copyrights; patents; industrial design; trade secrets; measures relating to pharmaceutical products and agricultural chemical products; and special requirements for border measures. Discussion of these subjects are beyond the scope of this Advisory.

3. The Industry Trade Advisory Committee on Intellectual Property Rights, Advisory Committee Report to the President, the Congress, and the United States Trade Representative on a Trade Agreement with Mexico and potentially Canada (September 27, 2018) (ITAC Report).

4. ITAC Report, at 14.

5. Article 18.2.4, KORUS FTA. The KORUS FTA is a bilateral trade agreement between the United States and the Republic of Korea.

6. See, e.g., Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961) (citing a multifactor test for assessing likelihood of confusion); AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (same).

7. ITAC Report at 3.

8. DELTA® and design, registered to Delta Faucet company for faucets, U.S. Registration No. 3,062,101.

9. DELTA®, registered to Delta Air Lines for air transportation of passengers and cargo (U.S. Registration No. 654,915).

10. ITAC Report, at 14.

11. Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957), as amended.

12. Although Bill C-31, The Economic Action Plan Act 2014, No. 1, (amending Canada's Trademarks Act to make Nice classification mandatory for all applicants) received Royal Assent in 2014, the specific amendments have not yet taken force and are expected to become effective in 2019.

13. ITAC Report, at 4.

14. ITAC Report at 4.

15. US Registration Nos. 0802418 (IDAHO®) ; 2014628 (PARMA HAM®); 571798 (ROQUEFORT®). The owner of a certification mark cannot use the mark to certify the qualities, characteristics or geographic origin of its own goods or services under US law.

16. The ITAC Report also commends the USMCA for requiring the member countries to refrain from rejecting wine imports solely because they use particular "traditional" descriptive terms". ITAC Report at 17. The Report reasons that this should help retain market access for US wine exports. A discussion of the wine and spirits aspects of the GI provisions is beyond the scope of this Advisory.

17. See ITAC Report, at 16.

18. Id.

19. Id.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Cowan Liebowitz & Latman PC
In association with
Practice Guides
by Mondaq Advice Centers
Relevancy Powered by MondaqAI
United States
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Cowan Liebowitz & Latman PC
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions