Trademark FAQs

A trademark is a recognizable sign that identifies and distinguishes the goods or services of one business from those of other businesses in the marketplace. Trademarks can be words, symbols, designs, colours, three-dimensional shapes, holograms, moving shapes, modes of packaging goods, unique positioning, or even sounds, scents, tastes or textures. Trademarks are the brands that customers come to know and depend on. Most businesses have at least three main trademarks: 1) company name, 2) company design/logo, and 3) company tagline.

Anyone who has a business, good, or service can benefit from having a trademark.

Any individual or legal entity that owns a trademark can file an application to register it. An applicant can be a company, individual, partnership, lawful association, or trade union.

Generally, trademarks with the most strength and value are those that are considered distinctive. Distinctive trademarks often include coined, arbitrary and/or fanciful terms, or creative design elements. Distinctive trademarks are unique and are capable of distinguishing one applicant’s goods and/or services from those of another.  

Trademarks with the least strength and value are those that are considered clearly descriptive. A clearly descriptive trademark is a term that clearly describes the character or quality of the goods and/or services in association with which it is being used. Clearly descriptive trademarks are typically incapable of distinguishing one applicant’s goods and/or services from those of another. 

A simple example is the term APPLE. No one entity could acquire a monopoly on the term APPLE and sell the fruit apples, as this would create an unfair monopoly. However, Apple Inc. had no problem securing the trademark APPLE for computer goods, as the two are completely unrelated. In fact, Apple Inc.’s brands are so unique, they are said to be valued at over 100 billion dollars.   

Registering a trademark allows individuals and businesses to protect their intellectual property. Owning a trademark registration has many advantages:  

• It shows that the trademark is yours
• It gives you exclusive rights to use the trademark
• It prevents others from using a confusingly similar trademark
• It allows you to flag infringements by others and enforce your ownership rights
• It helps you license your trademark to increase profit and your brand’s popularity
• It can be sold separately from your business as an asset
• It will increase the value of your business
• It can be used as a security interest
• It can make it much easier to secure investors
• It can make it much easier to sell your business

If you do not register your trademark, there are many risks: 

• A third party could register the same or similar trademark and prevent your continued use
• A third party could copy your trademark
• You may be unaware that your trademark is infringing on a third party’s trademark, which could lead to legal action against you
• You may not realize that your trademark is not registrable and, therefore, has little or no value—this, in turn, decreases the value of your business
• Your rights associated with the trademark would be difficult to defend if a third party uses the same or similar trademark

A trademark agent is a specialist in the practice of trademark law, who, pursuant to the Canadian Trademarks Regulations, has worked in the field of trademarks for at least 24 months and who has passed a series of examinations.

 The Canadian Intellectual Property Office “highly recommend[s] that an owner hire a registered trade-mark agent to act on their behalf.” Preparing and prosecuting a trademark application can be a complex task, and even more so if a third party challenges your right to use the trademark. An experienced and competent trademark agent can save a trademark owner from serious problems caused by an improperly prepared application.

Using the ™ symbol demonstrates to others that you are using your brand (word, logo, tagline, etc.) as a trademark and that you are therefore establishing common-law rights in that brand. The ™ symbol can be displayed on your collateral before applying for registered trademark protection.

The ® symbol represents registered trademark rights and may only be used once a trademark has been registered.

Trademarks that are used in the marketplace, but not registered, acquire common-law trademark rights. Common-law trademark rights are restricted to the geographical area in which your trademark has developed a reputation through sufficient use and by gaining goodwill over a period of time. For example, if you conduct business using your trademark in Ottawa, you may have common-law trademark rights in Ottawa but not in Toronto. Registering your trademark gives you the exclusive right to use the trademark with your goods or services across Canada. A registered trademark owner also has much more extensive legal rights. In addition to pursuing a third party for passing-off, a registered trademark owner may also sue third parties for infringement and depreciation of goodwill.

Owning a company name or domain name does not grant your company exclusive rights to that term. At best, you may be able to establish common-law rights in the term. For exclusive rights, you must register the term as a trademark in the jurisdiction of interest.

Trademark rights are jurisdictional; in other words, owning a trademark registration in Canada does not give you trademark protection in the United States. You must file individually to register your trademark in each jurisdiction where protection is desired.

Generally, a trademark owner must file an individual trademark application in each jurisdiction in which trademark protection is sought. However, some exceptions include: 

European Applications: The European Union Intellectual Property Office (EUIPO) has an inclusive filing system that allows a trademark owner to file a single application to register their trademark in in the countries that are part of the European Union (Austria, Belgium, Bulgaria, Croatia, Republic of Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, and Sweden). 

International Applications: The Madrid System for the International Registration of Marks, also known as the Madrid Protocol, allows a trademark owner to file a single application through the World Intellectual Property Office (WIPO) to register their trademark in up to 120 countries worldwide. Canada joined the Madrid Protocol on June 17, 2019, allowing Canadian applicants, having a pending application or registration for the same trademark, to apply for international protection using the Madrid System. Filing an international application can be cost-effective for trademark owners seeking protection in multiple (generally at least five) jurisdictions simultaneously, but there are some risks involved. Because the international application relies on the applicant’s pending application or registration, if that base application or registration is compromised or successfully attacked by a third party, the international application will also fail.

A trademark search can identify potentially problematic third-party issues and other impediments that may prevent registration. By clearing a trademark prior to adoption, you can avoid investing in a trademark that is not available for use and/or registration. 

Not conducting a trademark search in advance to adopting a trademark can put your business at serious risk. If you begin using a trademark that is too similar to an existing trademark owned by a third party, your company could be forced to re-brand or even be sued. Before adopting a new trademark, a business owner should: 

• Conduct an Internet search to determine if there is any existing common-law use of that trademark by others; and 

• Enlist the assistance of a trademark professional to search prior pending or registered trademarks in the jurisdiction where protection is sought, to ensure that the same or similar trademark has not already been filed or registered by someone else. 

Professional trademark searches can be completed by a trademark agent or lawyer and may include a full trademark registrability search or a direct-hit trademark search. A full registrabilty search involves a thorough review and comparison of prior pending and registered trademarks to predict the chances of successfully registering your trademark, but it can be costly. At a minimum, a direct-hit trademark search, to locate identical or near-identical trademarks, should be conducted for each jurisdiction in which protection is sought. A direct-hit search is less costly and typically discloses 90 percent of relevant third-party trademarks. 

It is important to note that while even full trademark registrability searches are very comprehensive, relevant third-party trademarks may still be missed. The success of a trademark cannot be guaranteed until registration is achieved. Technically, even a registered trademark may be challenged by a third party, although this is uncommon and must be carried out via a Federal Court action.

Different jurisdictions have different procedures, but registering a trademark generally involves the following three steps: 

Step 1: Filing

The first stage of the trademark registration process involves preparing and filing a trademark application with the Trademark Office of the jurisdiction in which protection is sought. The application lists relevant details, such as owner’s name and address, the trademark, and the goods and/or services associated with the trademark. Before filing an application, a search of pre-existing trademark applications and registrations may also be conducted to ensure that an identical or similar trademark was not already filed or registered in that jurisdiction. Once the application details are finalized, the application is filed. 

Step 2: Prosecution

After a trademark application is filed, the application is examined to ensure it meets the requirements of the Trademark Office in the jurisdiction in which protection is sought. An examiner may raise certain objections, require more information, or ask for clarification of the application details. In such cases, an Examiner’s Report will be issued that summarizes the examiner’s findings and requirements, and the applicant will be given an opportunity to meet those requirements. After the trademark application is approved by the examiner, it will be publicly advertised (or published) for a set period, known as the opposition period, to give others a chance to oppose the application. Fortunately, oppositions seldom occur. 

Step 3: Registration 

If no objections are raised during the opposition period, the application will proceed to registration. Depending on the particular jurisdiction, a registration fee may be required. The Trademark Office will issue a Certificate of Registration listing the official registration date and the registration number. Once the trademark is officially registered, the registrant may legally use the ® symbol beside the trademark. A typical registration term is 10 years, but the term can vary per jurisdiction. When the registration term is close to expiry, the registration may be renewed for a subsequent term.

Registration timelines vary considerably depending on the jurisdiction in which trademark registration is sought. The timeline can also be impacted by the specific issues that may arise during prosecution. 

On average, applicants can expect the following timelines:

*We emphasize that the above timelines are rough estimates that can fluctuate due to a number of factors that are outside of the control of our firm.

Costs for registering a trademark can vary considerably depending on a number of factors. These include: 

• The jurisdiction in which registration is sought
• The number of “classes” of goods/services that the application covers
• Issues that may arise while the application is being prosecuted

In Canada, costs may be as low as $2500 per application. In other jurisdictions, such as the United States and Europe, costs may range from $4000 to $6000. We are pleased to provide cost-estimates and fee breakdowns upon request.

The Nice Classification of Goods and Services is a system for grouping the goods and/or services listed in a trademark application into 1 of 45 predetermined classes. In most jurisdictions, including Canada, classifying goods and/or services according to the Nice Classification System is mandatory. Because most Trademark Offices charge additional fees per class of goods and/or services, the number of classes your trademark application falls into will impact the fees associated with the application.

The Canadian Intellectual Property Office: www.cipo.ic.gc.ca 

Directory of Intellectual Property Offices Worldwide: https://www.wipo.int/directory/en/urls.jsp 

Origins IP: info@originsip.com