If you're building a brand in Canada or the United States, working with a qualified trademark attorney is one of the smartest investments you can make. Whether you're a Canadian entrepreneur, a U.S. business owner, or an international company looking to protect your brand in North America, understanding what trademark lawyers do is key to securing your intellectual property effectively and efficiently.
This guide outlines the role of trademark attorneys in both jurisdictions, explains why hiring a licensed attorney is often necessary, and highlights how TrademarkFactory’s flat-fee packages simplify the trademark registration process for you.
What Does a Trademark Lawyer Do?
A trademark attorney is a legal professional who specializes in trademark and intellectual property (IP) law. Their primary role is to help individuals and businesses protect their brand names, logos, slogans, and other distinctive assets by ensuring proper registration and enforcement of trademark rights.
1. Identify and Assess Protectable Assets
Trademark attorneys analyze your business assets to determine what can and should be protected under trademark law. This includes business names, logos, product names, taglines, packaging, and sometimes even sounds, colors, or 3D shapes. In Canada, the law permits registration of non-traditional marks such as holograms and motion marks, which requires sophisticated legal analysis.
2. Conduct Comprehensive Trademark Searches
Before filing a trademark application, attorneys conduct clearance searches to identify any existing trademarks that may conflict with your proposed mark. This involves searching:
- The Canadian Intellectual Property Office (CIPO) trademark database
- The U.S. Patent and Trademark Office (USPTO) database
- Provincial/state-level trademark registries
- Common law and unregistered trademark sources
A proper clearance search helps minimize the risk of rejection, opposition, or future litigation.
3. Develop and Execute a Filing Strategy
Trademark lawyers create a customized filing strategy to meet your brand’s unique goals. For instance, they may recommend filing separate applications for your name, logo, and slogan, allowing you to protect each element individually. They also guide you through selecting the appropriate classes of goods and services under the Nice Classification system.
4. Draft and File Trademark Applications
Once the strategy is in place, your attorney will draft and file your trademark application to ensure it meets all legal requirements. This includes accurate descriptions, proper classification, and providing an acceptable specimen of use (where applicable).
In Canada, applications are filed with CIPO, while in the U.S., they are submitted to the USPTO. Mistakes or omissions can lead to delays, refusals, or even abandonment of your application—issues that a trademark attorney is trained to prevent.
5. Respond to Examiner Reports and Office Actions
If the examiner raises objections—commonly called "office actions" in the U.S. or "examiner’s reports" in Canada—your attorney will prepare and file a legal response. This may involve arguing against a refusal, amending the application, or submitting additional evidence.
Handling office actions without legal expertise often leads to avoidable rejections, prolonging the trademark registration process or derailing it altogether.
6. Enforce and Maintain Trademark Rights
Once your trademark is registered, ongoing enforcement and maintenance are essential. Trademark attorneys help you:
- Monitor for infringing trademarks
- Send cease-and-desist letters
- Initiate enforcement proceedings if necessary
- Manage renewals (every 10 years in both Canada and the U.S.)
- Handle licensing and assignment agreements
7. Represent You in Legal Proceedings
Trademark disputes are typically resolved through opposition or cancellation proceedings at the USPTO’s Trademark Trial and Appeal Board (TTAB) in the U.S. or through Federal Court in Canada. Only licensed trademark attorneys can represent clients in these venues. TrademarkFactory works exclusively with trademark attorneys who are fully qualified to represent clients in both registration and litigation matters.
Canada vs. U.S.: Do You Need a Trademark Attorney?
In Canada:
Hiring a trademark attorney is optional but highly recommended. Many applications filed without professional assistance face delays or rejection due to improper classification, vague descriptions, or failure to meet evidentiary requirements.
TrademarkFactory’s Canadian trademark lawyers ensure every application is complete, strategic, and fully compliant with CIPO standards.
In the United States:
If you are foreign-domiciled (including Canadian businesses), you are legally required to be represented by a U.S.-licensed attorney to file or prosecute a trademark with the USPTO. TrademarkFactory assigns a U.S.-licensed attorney to every U.S. trademark application as part of its all-inclusive flat-fee service.
Why Choose TrademarkFactory?
TrademarkFactory works exclusively through licensed trademark attorneys and offers flat-fee packages with unlimited legal work. This means you know upfront what the process will cost—no hidden fees, no hourly billing, and no surprises.
Every stage of your trademark journey, from trademark search and application to office actions and enforcement strategy, is handled by professionals with deep experience in trademark law in both Canada and the U.S.
Frequently Asked Questions (FAQ)
What is the difference between a trademark agent and a trademark lawyer in Canada?
A trademark agent is qualified to represent clients before CIPO and handle the administrative aspects of trademark registration. However, only a trademark lawyer can provide legal advice, represent you in court, and handle disputes. TrademarkFactory works exclusively with trademark attorneys.
Can I register a trademark without a lawyer?
In Canada, yes—but it is risky. The application process is nuanced, and mistakes can result in delays or lost rights. In the U.S., foreign applicants must use a U.S.-licensed trademark attorney.
How long does a registered trademark last?
Both Canadian and U.S. trademarks are valid for 10 years and can be renewed indefinitely, as long as the mark remains in use and renewal requirements are met.
What happens if someone infringes on my trademark?
Your trademark attorney can initiate legal action, send a cease-and-desist letter, or file opposition/cancellation proceedings. Proactive enforcement is essential to maintaining the value of your trademark.
Do I need to register my trademark in both Canada and the U.S.?
If you conduct business in both countries, registering in each is advisable. TrademarkFactory offers bundled services to help you secure protection in multiple jurisdictions under one flat fee.
Get Started with TrademarkFactory
TrademarkFactory is the only firm offering flat-fee trademark services handled exclusively by licensed attorneys in Canada and the United States. Whether you’re applying for the first time, expanding internationally, or enforcing an existing mark, our trademark attorneys are ready to protect your brand with transparency, predictability, and proven expertise.
Learn more about our flat-fee trademark packages and book your free consultation with us.