(1) Initial Trademark Availability Search
This is an optional stage. We recommend conducting a comprehensive trademark availability search to determine if there are any obvious obstacles to the use and registration of the mark in Canada or the United States. A comprehensive or basic search should be considered for Canada, and potentially the United States if your business will be selling goods or offering services in the U.S. A comprehensive search will search the Trademarks Register and look for other sources that could reveal problematic unregistered marks, trade names or domain names. The search stage is an important step to take prior to spending money on a marketing strategy, as problematic marks revealed in the search may require a change in the name or logo to avoid infringement of a trademark or an action in passing off.
(2) Preparing a Trademark Application
- To prepare a trademark application we need the following information:
The full legal name and business address of the applicant; - The trademark (if it is a design, logo or device mark, a clear depiction of the mark, preferably in .jpg format). If colour is claimed as a feature of the mark, we would also need the relevant details;
- A description of the goods and/or services to be associated with the trademark. The Trademarks Office requires a fairly specific listing of the goods and services associated with the mark;
- An indication as to whether there have been any predecessors in title to the trademark (i.e., previous owners);
- An indication as to whether the mark has been used in commerce (in Canada, application no longer need to specify the basis for filing or details of the use; however, detailing the date of first use and instances of continued use can be helpful in the event the mark is opposed. Furthermore, this information is required in many other jurisdictions, including the United States.).
“Use” is defined as follows in the Canadian Trademarks Act: “A trademark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.” By contrast, a trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
(3) Filing a Trademark Application
We may file in any jurisdiction first; although we generally advise that companies file in the jurisdiction where they are currently selling or plan on selling in first. Other foreign jurisdictions within the Paris Convention Treaty can be filed in within six (6) months of the filing date and still maintain the earlier filing date of the first filed country.
(4) Prosecution Stage
An Examiner in the Trademark Office will review your application and determine if the Trademark is approved for advertisement in the Trademarks Journal. If the Examiner determines there is an issue with your application, they will forward us an Office Action, which we will report to you. Once approved for publication, the mark will be published int eh Trademarks Journal (published weekly on the CIPO website). Third parties have two (2) months from the advertisement to oppose your application.
If the trademark is opposed, we will receive a statement of opposition and have two (2) months to file a counter statement. Both parties have an opportunity to file evidence and written arguments, as well as make submissions at an oral hearing. If the opposition is withdrawn or unsuccessful, the application for a trademark will be allowed. If the opposition is successful, the application will be completely or partially refused.
Once a trademark is allowed, the Trademark Office will issue a certificate of registration. The trademark registration process generally takes between 18 months to two (2) years. Once registered, the term of the registration is currently 10 years. Unlike other forms of Intellectual Property, trademark registrations may be renewed in perpetuity.
