What is the Trademark Registration Process



Hello again this is Andrei Mincov with Trademark Factory. In this video you will about the registration process for trademarks in Canada.

The registration process is quite long in Canada.

The first step is to search if your brand can actually be registered as a trademark. By the way, unlike most firms who charge several hundred dollars for it, we do it for free. So if you are not sure if you have something trademarkable, go to the home page of trademarkfactory.ca, fill out the form and request the free, no-obligation, no-strings-attached trademark search for your brand.

In some cases, you may also want to search for unregistered trademarks. A prior unregistered trademark will not automatically make your trademark unregistrable, but it may be the basis of an opposition proceeding or a lawsuit in the future. The rule of thumb here is to imagine a situation when you discover that such an unregistered trademark exists. Will you continue using that mark in your business? If you answered “yes, I will probably look for a more unique name”, then conducting a comprehensive trademark search is a good idea. If you answered, “I’ll take the risk”, then the search would be a waste of your money.

If you would change your brand in these circumstances, then it’s a good idea to conduct the search. Most businesses, however, would choose to take the risk. If this is the case, then there is no reason to spend money on the optional search, because no matter what it reveals you are still going to do what you were planning to do.

After you have confirmed to yourself that you have something trademarkable, you file the trademark application. In this application, you need to describe the trademark and set out the products and services in association with which you are asking the trademark to be registered. You also need to state the basis of registration. The two most common basises of registration are “use in Canada” and “proposed use”.

You would file your trademarks with the “use in Canada” basis if you are already using your trademark in Canada

(I explained the meaning of the word “use” in trademark context in one of the previous videos, but to recap, a trademark is used in association with products if you place it on your products or its packaging, and it is used in association with services is you use it while rendering or advertising your services).

Alternatively, if you are only planning to bring your trademark to the market, you would use the “proposed use” basis. The application is filed online, together with the government fee of $250.

Then the application just sits in the Canadian Intellectual Property Office for 6-7 months without anybody looking at it. When a trademark examiner finally looks at it in 6 months, in 70-75% of the cases the examiner will find something they don’t like in your application and will send you what is called an “office action”. It could be that you missed another trademark that may prevent registration of your trademark, it could be that your trademark is not registrable, because the examiner considers it to be “clearly descriptive or deceptively misdescriptive”, it could be that the way you worded your statement of wares and services is not specific enough to meet the required standards, and it can be a dozen other reasons.

If you receive an office action, you will have 6 months to respond with your reasons why the trademark should be registered or with amendments to make the examiner happy. If this satisfies the examiner, you’re all set. Otherwise, you will receive another office action. You only get two kicks at the can. If after your second response the examiner is still of the opinion that the trademark is not registrable, your application will be refused.

If you convinced the examiner that your trademark is registrable, your application will be approved and then published (or, as they call it, advertised) in the Trade-marks Journal.

Publication of your application in the Trademarks Journal opens a two-month formal opposition period, during which anyone can file a statement requesting that your trademark be denied. This is a rare occurrence, but it happens every now and then, especially if your trademark happens to be similar to a well-known trademark owned by a corporation with a substantial legal budget.

If you lose the opposition proceedings, the trademark will not be registered.

If nobody contested your application or if you successfully defended it during the opposition period, your application will be allowed.

Now you will need to pay another government fee of $200. At this point, if you filed your application based on the “use in Canada” basis, you will get the certificate of registration of your trademark. If you filed the application based on the “proposed use” basis, you will need to file a declaration of use, informing the Canadian Intellectual Property Office that you have started using your trademark. Once you file the declaration, you will get the certificate of registration.

Again, this is a long process that normally takes anywhere between 18 and 24 months. If you are lucky enough to not receive an office action, you may be done in about a year. If you are unlucky to attract opposition proceedings, the process make take as long as 3 to 5 years.

There are 3 ways to register trademarks.

You can do it yourself.

Technically, you are not required to have a trademark agent assist you in the filing of your trademark application.

The only advantage is that you will be able to save on fees that a trademark professional will charge you.

The disadvantages are that it takes a lot of time to learn how to properly file the trademark application, and more importantly, how to respond to office actions. If you look at the trademarks database, you will see thousands and thousands of trademarks that were abandoned after the applicant received the first office action. Unfortunately, this is what often happens when you file a trademark application yourself.

If your application is rejected, you are not going to get the government fee back.

You can use other law firms or trademark agents

The advantages are that you will have significantly better chances of getting your trademark registered compared to when you do it yourself. A professional is going to do the work for you, so you can focus on building your business not trying to become an expert in trademark law.

The main disadvantage of using other law firms and trademark agents is not that it’s expensive, but that it is UNPREDICTABLY expensive. Call any firm and ask them how much it would cost you to have them assist you in registering your trademark, and you will receive a 2-page schedule of fees detailing separate costs for every tiny step that they would be taking to get your trademark registered. The cost will vary dramatically depending on the complexity of the case, and often there is no way of predicting whether the trademark examiner would find something improper with the application. I know of many cases when a $700 filing became a $5,000 file.

The other disadvantage is that if despite all the hard work, your trademark is rejected, you will still have to pay for the services, even though you got no benefit out of it. It’s because the vast majority of other firms charge by the hour, not by result.

Finally, you can use the Trademark Factory

We are the only firm in the world that offers trademark registration services with a triple-peace-of-mind guarantee.

We guarantee that if your trademark application is rejected, you will receive ALL of your money back.

We guarantee that each trademark application is reviewed by a registered trademark agent before it is filed. This minimizes the risk of your trademark being rejected.

The reason we call this service the Trademark Factory™ is because we have a well-oiled machine to get your trademarks registered, guaranteed.

Having said that, you will never become another statistic for us. We treat all of our customers very personally, and guarantee that you will love our customer service and that you won’t be frustrated with not getting through to your lawyer when you need him.

We did our best to make choosing us as your service provider as easy as possible. If you decide that you will benefit from registering your trademarks, the Trademark Factory™ is an obvious choice!

In the next and final video, I will share with you a few tips and tricks that will help you in your brand strategy.

Got any questions? You know what to do! Call me, email me, or go to our website at TrademarkFactory.ca and read my book The Ultimate Insider’s Guide to Intellectual Property.

Thank you for watching. Talk to you soon.

Watch our other FAQs or leave your comments below!

comments powered by Disqus

Watch our other FAQs:

Introduction — What Every Small Business Owner Needs to Know About Trademarks
What Are Trademarks and Why Do We Need Them?
Trademarks vs. Trade Names
What Cannot Be Protected as a Trademark
Trademarks Don't Give Absolute Monopoly Over Words and Images
Registered ® vs. Unregistered ™ Trademarks
7 Benefits of Trademark Registration
When Should You Register Your Trademarks
Trademark Tips & Tricks