FREQUENTLY ASKED QUESTIONS How to Trademark a Name and Logo in Canada 2020

“Oh Canada, thou shall trademark thy brands...”

I'm Andrei Mincov, the founder of Trademark Factory. Canada has gone through some significant changes in its trademark laws lately. And is now closer to how the rest of the world, thus trademarks. And in this video I'm going to share how to trademark a brand name and logo in Canada.

THINKING OF TRADEMARKING YOU BRAND?

TRANSCRIPT

First of all, if you or your company are not in Canada. And you have a trademark application or registration in your home country. If you're a plenty to protect your brand in more than five other countries, know that you may now include Canada in your Madrid trademark application. This is new as Canada has for years, refused to join the Madrid system. And now he's finally a member. Yayyy!

Also, if you already have your international Madrid registration, you can now add Canada through the subsequent designation mechanism. This is basically how you can expand the geographical scope of your international registration without having to go through the whole process from scratch.

Okay. With Madrid applications out of the way, and by the way, I have several other videos that explain the Madrid system in more detail. Now let's talk about registering your trademark in Canada directly. There are a few things you should keep in mind. First of all, aside from the brand owner, the only persons authorized to communicate with the Canadian intellectual property office are registered trademark agents. Being a lawyer or a patent agent or just someone who knows a lot about trademarks is not good enough. You need to be properly recognized and have a trademark agent license. Now, just to give you some context, most lawyers in Canada are not licensed trademark agents. Now, as much as I despise the idea of licensing, uh, of government licensing things are what they are. So it's just something you should accept as reality. Now, if you don't want to file and prosecute your trademark application yourself, you need to have a registered trademark agent do it for you. Okay?

Second, the trademarking process in Canada now takes crazy long time. Usually more than two years now. It used to be that they would examine your trademark application within six months after filing. Then it became eight, then nine, then 11 now it takes over a year for them to look at most applications for the very first time. It just sits there and I know it's super frustrating, but that's what it is. Now expect your application will take forever to go through and start sooner rather than later. Okay? The process itself is very much like trademark registration in most countries. First, you should conduct a search to see if your brand is trademarkable. Now, in theory, it's optional. Canadian intellectual property office is not going to require you to produce any evidence that you have done your homework, that you have done your searches, but why would you start a two year process without having a clue as to whether your trademark is even registrable? It doesn't make any sense, and I don't mean just a knockout search when you're searching for identical trademarks only. I mean, do a proper comprehensive search to make sure you're not wasting your time and money. Okay.

Then you would file your trademark. The government fees are now 330 Canadian dollars for the first class of goods and services in which you follow your trademark plus 100 Canadian dollars for each additional class. For example, if you file your trademark in four classes, you will pay 630 Canadian dollars as filing fees. 300 plus three times 100 and yes, Canada is finally adopted the Nice classification. So all applications need to have goods and services grouped according to the official classes. By the way, we've released several videos on classes on our work and a few more. So if you want to know more about how trademark classes work, make sure you subscribe and check out our other videos.

Now, most trademark applications are filed online through CIPO’s website. And then, once the examiner finally reviews your application for the first time, they will either mail you a notice of approval or an office action. And I mean mail by paper. We receive dozens and dozens of envelopes every week, and then we scan and shred them. You would think that they'd have figured out a way to post these documents online by now, but hey, uh, they're gonna tell you how much they care about saving the environment and texts the crap out of you. And then they'll gonna send you tens of thousands of letters that could have easily been sent by email. But, uh, I digress. If you receive the notice of approval, you'll have a chance to review it to make sure all details are correct before your application gets published in the trademarks journal for opposition purposes. And if you receive an office action, you will have six months to respond to it by fax or by mail, not by email, not through an online form, by fax or by regular mail.Now the next time you will hear from the examiner will be many, many months later, and then you have another six months to respond and so on.

Assuming the application eventually gets published, anyone will have two months to oppose your trademark application or request a three month extension of time to do so. If your application is opposed, then there's a whole lot of procedural back and forth that you would need to go through, including in certain cases, oral hearings, and if you win the opposition or if nobody opposes your application within this period, your trademark application will be allowed and registered. Yayy!

The funny thing here is that while CIPO sends all of their notices and office actions by regular mail, only document you would actually want to receive as an original would be the trademark registration certificate. But guess what? It's the only document they send you as a PDF. Go figure. Now, I thought it was kind of dumb. So what we do here at trademark factory is we print these PDFs out. We put them in a nice custom frame, and we mail them to our clients. I mean, after all, this is the moment they've been waiting for, for two freaking years. And we want them to have something tangible to celebrate over, not some PDF file.

Once your trademark registers in Canada, you will need to renew it in 10 years and then every 10 years after that. So that's how you trademark your brand name and logo in Canada. I hope this gives you a pretty good idea of the process and just so you know, we can help you with the entire process. From start to finish for a single all-inclusive flat fee, risk-free, guaranteed. Now, me personally, I'm a registered Canadian trademark agent. Our all-inclusive flat fee is not a bait and switch offer to get our foot in the door and then milk you as an ATM as the trademarking process unfolds. It covers everything from filing to registration, except for opposition, by the way, yes, we do have a package that covers oppositions as well. And yes, if you're serious about your brand and your business, you will find our fee very much manageable and affordable. Just don't expect some silly offers where they say, you can get your brand trademarked for a couple of hundred bucks. And if we fail at getting your trademark registered in Canada, you will get a full refund, no matter how much time we will have spent working on your trademark application.

If you want to learn more about trademarking, make sure to subscribe to my channel. I post a new video about trademarks every day, and if you want to get the trademarking process started to protect your brand in Canada, go to trademarkfactory.com or trademarkfactory.ca if you prefer Canadian domain names and book your free call with one of our strategy advisors, the call is free. The advice is priceless. And until then, I will see you in the next video.

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Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.