TRADEMARKS AND TRADEMARK LAW
To get started, all you need to do is give us a call, chat with us online, or send us an email. Tell us what name you would like trademarked, and whether you want it registered in the US, Canada, or both. We will then conduct a preliminary trademark search for you, free of charge, to determine if there are any obvious issues which would make getting a trademark difficult or impossible. A preliminary trademark search, also called a “knock-out” search, is a relatively quick search that determines if there are any obvious problems with your proposed brand that is under consideration for adoption.
A preliminary trademark search in Canada typically involves searching through the CIPO database to see if any identical trademarks are already listed for any goods or services that are similar to the goods and services to be used in association with a proposed brand. A preliminary trademark search also typically involves some basic web searching on Google to see if any conflicting marks are readily identifiable, i.e. it typically only shows if there are any obvious conflicts and whether it is worth investing in a comprehensive trademark search. Lastly, A preliminary trademark search sometimes involves conducting a NUANS (or ‘Newly Automated Name Search’), which searches corporate and business registries throughout Canada, except Quebec.
We charge flat rate legal fees for our trademark services. The flat rate covers everything from start to finish, including consulting with you, conducting a preliminary trademark search to see if there are any issues, drafting your trademark application, responding to office actions, and obtaining final registration. In addition to the legal fees, there are government filing fees.
In Canada, the costs are CAN $250 to file your application, and CAN $200 to obtain a registration certificate plus our flat rate legal fees.
In the US, the government costs are usually USD $275 per type of good and service, plus our flat rate legal fees.
Sometimes there are additional costs. If an assignment, Statement of Use, reliance on a foreign application or registration, or other additional or more complex tasks are involved, we will advise you in advance and quote you a reasonable fee. Also, if there is a legal proceeding related to your application, which is generally quite rare, then an hourly rate would apply to the legal proceeding.
The trade-mark application process in Canada consists of a series of stages through which your application must proceed before your trade-mark can be entered on the Canadian Trade-marks Register. The entire application process, from filing the application to receiving the certificate of registration, can last anywhere from eight months to over two years. A trade-mark registration is valid for 15 years, and may be renewed for successive fifteen year periods thereafter.
The following is an overview of the different stages in the trade-mark application process:
After the trade-mark application has been filed with Trade-marks Office, the Formalities Section of the Trade-marks Office will review it to ensure that it is complete and that the proper administrative fee has been paid. If everything is in order, a file for the application will be created and entered in the database, and the application will be assigned a filing date and an application number. This stage can take anywhere from a couple of days to a couple of weeks.
The application will then be assigned to an examiner at the Trade-marks Office who will evaluate the contents of the application. The examiner will conduct a search of the Trade-marks Office’s database to determine if there are any prior trade-marks, registered or in a pending registration, which are confusing with the applicant’s trade-mark. The examiner will also determine if the applicant’s trade-mark and the application itself complies with the formal and substantive requirements of the Trade-marks Act.
If there are no problems, the application will be approved for the advertisement stage. If, however, the examiner has objections to the application, the examiner will outline the objections in a report and provide the applicant with an opportunity to make changes to the application or submit arguments responding to the objections. If the examiner still has concerns about the application, the examiner will send another report requesting additional changes. Each report that is issued by the examiner is called an “office action” because it is an action against the application that is taken by the Trade-marks Office. A resolution may be reached after the exchange of one or more response letter. In the event that a resolution cannot be reached, the application will be refused by the Trade-marks Office or abandoned by the applicant. It normally takes approximately six to eight months for the application to reach the examination stage. For each office action, a response must be submitted within four months. If no response is submitted and no extension of time is requested, the Trade-marks Office will declare the application to be abandoned.
After the application is approved, it will be advertised in an issue of the Trade-marks Journal. Typically, it takes approximately four months for the application to appear in the Trade-marks Journal after it has been approved. During the two-month period after the application is advertised, any member of the public may come forward to oppose the application. If the application is opposed, it is taken out of the application process until the opposition is resolved. However, if no one files a statement of opposition, or requests an extension of time to file a statement of opposition, within the two-month period, the application will be allowed for registration.
After the application is allowed, the Trade-marks Office will require payment of a final registration fee before the trade-mark is entered on the register. If the application is based on proposed use, a declaration stating that the trade-mark has actually been used by the applicant must be submitted along with an additional filing fee. The required fees and the Declaration of Use must be submitted within six months from the date of allowance or three years from the filing date, whichever is later. If more time is needed by the applicant to put the trade-mark in use, the Trade-marks Office will grant extensions of time for the applicant to submit the Declaration of Use. Each extension of time is for six months and an additional fee must be paid for each extension. Approximately one month after the submission of the registration fee, the Trade-marks Office will register the trade-mark and issue a Certificate of Registration to the applicant.
Below is a chart showing the steps in a Canadian trademark application. For more information, visit our website, http://trademarks-canada.com/.