Basics of Trademarks
- What is a trademark?
A trademark (also referred to as trade-mark or trade mark) is a form of intellectual property protection for the words, symbols or designs that you (or your company) use to identify you as the source of your goods and services. If operating properly, trademarks are like an arrow for the consumer creating a pointed link between a good or service and its source and, with that, the goodwill and reputation a source has acquired with its customers. A trademark may be a word, phrase, symbol, design, sound, slogan or logo that identifies and distinguishes the sources of the goods and services of one party from those of another.
There are three types of trademarks: an ordinary mark, which encompasses most word, image, and sound registrations, a certification mark, which symbolizes that the product or service has met a certain standard of quality, and a distinguishing guise, which is a unique way of packaging or distinguishing a product.
- What can I trademark?
Common examples of trademarks include brand names, logos, designs, sound bites, slogans and phrases. Generally, anything that directly represents your brand and is unique can potentially qualify for trademark registration.
- What can't I trademark?
You cannot register clearly descriptive words or marks, clearly misdescriptive words or marks, marks that refer to the geographic origin of your product, marks that are confusingly similar with those that have already been registered or are in the process of registration, and marks which are the name of the goods and/or services that the mark is being used with.
The Trademarks Act also sets out a list of what are known as “prohibited marks”. These marks include “any badge, crest, emblem or mark” that has been adopted and used by any public authority in Canada as an official mark, and which have been identified as such by the Registrar of Trademarks. It is important to work with a qualified trademark agent to ensure that you are not filing a trademark application for something which will not be registrable. Contact us for a complimentary initial telephone appointment if this is a concern for you.
- What are the benefits to a trademark registration?
A trademark registration gives the trademark owner the right to exclude all others throughout Canada from using their trademark in association with the goods and services listed in their trademark registration and to exclude all others from using any trademark that is confusingly similar to theirs. A trademark registration makes it much easier to sue for infringement (without one the trademark holder will be required to prove that they have goodwill and reputation associated with their brand). Perhaps most importantly, a trademark registration can be a valuable asset for your business.
Read more about the benefits of registering your trademark in Canada.
- What are the steps to obtaining a trademark registration?
To obtain a trademark registration, you must apply to the Canadian Intellectual Property Office (CIPO). The application will need to be accompanied by the $250 government filing fee. It is recommended that you conduct a search of existing registrations and common law trademarks prior to filing your application to ensure that the trademark you want to use is available for registration.
Once your application has been filed it be will be assigned to a trademark examiner who will review it for technical and substantive compliance. If the application is acceptable, it will be approved and then advertised in the Canadian Trademarks Journal for 2 months. During that time any third party can oppose the application. If no one opposes the application, it will be allowed and permitted to proceed to registration.
- How long will it take for a Canadian trademark examiner to review my trademark application?
We are currently finding that it can take anywhere from 8 to 12 months before an application is reviewed by an examiner at the Canadian Trademarks Office.
- How long does it take for me to get a registration once I file my application?
The entire application process, from filing to registration, generally takes 12 to 18 months if there are no objections from an examiner or oppositions to the application.
- What is the difference between a trademark and other types of intellectual property?
A trademark is meant to distinguish and protect your brand name or marketing features associated with it, and the goodwill and positive reputation that they carry with them. Patents, on the other hand, protect inventions, industrial designs protect aesthetic designs and a copyright protects original works like original pieces of art, music or literature.
- What is the difference between a trade name and a trademark?
A trade name is the name of your business. A trademark is the word, symbol, design, logo (etc.) that you use to identify you as the source of your goods and services. Your trademark and trade name can be identical – (i.e. your company is named Nike Inc. and you sell Nike shoes) or different (your company is named Alphabet Inc. and sells AdWords Internet advertising).
- What is the difference between a registered trademark and an unregistered trademark?
A registered trademark has been examined, has been confirmed to be distinctive, and is subject to the protections under the Trademarks Act, including nationwide protection. In order to obtain a registered trademark, you have to apply for a registration with that country or region's intellectual property office and continue to renew it as required in that country or region. In return, your trademark registration is presumed to have validity, with any burden of proof to invalidate the registration resting on the challenger.
An unregistered trademark has not been registered, and is governed under common law. It is valid only in the geographical area where it has been used, and the owner has to prove that it is a brand that has developed sufficient goodwill and reputation with consumers for those rights to be enforceable. This typically requires that the trademark has been used for a substantial length of time.
Click to learn more about the differences between registered and unregistered trademarks.
- What is a common law trademark?
A common law trademark is another name for an unregistered trademark. The term “common law trademark” is often used in the United States and Canada.
- What is the difference between a domain name and a trademark?
A domain name is a portion of a website address on the Internet. It allows a user to visit a specific webpage. A trademark is not a website address on the Internet; it is a symbol, image, design, word, or combination of words and designs that identify the source of your goods and services. You are not required to use your trademark in your domain name, but many businesses choose to do so, and it is often desirable to do so from a branding perspective.
- Can I register my domain name as a trademark?
You may be able to register your domain name as a trademark, but your domain name will be subject to the same rules and standards as other types of trademarks, so they will need to function as source indicators in order to qualify for federal trademark protection.
- Should I hire a trademark agent?
A trademark agent can help you with the trademark registration process which is lengthy, cumbersome, and sometimes very complicated. Where desired, a trademark agent can obtain a full trademark search for you to ensure that your trademark may be adopted without conflict and is registrable.
Trademark agents specialize in the law that applies when drafting trademarks. They know what is permitted and acceptable and what will be rejected by the Trademarks Office. They often know how to avoid problems during the application process and are keenly aware of the very strict deadlines that apply throughout the process. Good trademark drafting is a skill that requires years of training and experience. Errors in drafting can result in time and money wasted. This is another important reason to work with a trademark agent who is experienced and skilled in drafting of trademark applications.
Trademark agents may also have insight into the value and use of your trademark that you have yet to consider. Importantly, they can advise you on any issues which may arise during the registration process, helping to lessen the unknowns and surprises that are inevitable when tackling an application on your own.
Contact us for a complimentary initial telephone appointment to learn more about working with a trademark agent.
- Can two or more persons have the same trademark?
Yes, because a trademark is associated with particular goods and/or services. As such, the same trademark may exist in different classes, or categories, of goods or services, provided that such use would not result in a likelihood of consumer confusion.
- Can a trademark owned by one owner prevent registration and non-identical use by a different owner?
No. As long as the second use is different enough so as to avoid a likelihood of consumer confusion (i.e. use in unrelated industries), the second trademark may be registerable.
- I've formed my corporation, and my corporate name has been approved during the incorporation process. Does that mean I can use this name as a trademark?
This must determined on a case-by-case basis. There may be prior use of a trademark on an unregistered basis that could preclude you from adopting and registering your corporate name as your trademark. Further, another's use of a trademark that does not correspond to its corporate name may pose an issue. If you want to use your corporate name as your trademark is a very good idea to work with a trademark agent or trademark lawyer while you are incorporating to assess this before completing the incorporation process.
Contact us for a complimentary initial telephone appointment if you need our help with this.
- If I register my mark in a specific color or font, can someone else register the same trademark in a different color or font?
Potentially. As such, it may be preferable to register your trademark in black in white and in a generic, all-caps font to broaden your protection against others.
- If I register a trademark in one class, can someone else register it in another class?
Yes. Trademarks are generally limited in scope to the classes (or categories) in which they are registered.
- Does my trademark need to match my company name?
Your trademark does not have to match your company name. If the name, design, slogan, etc. of the good or service you are selling is different from your company name, you are permitted to register them as trademarks.
- Can I trademark dictionary words?
It may be possible to trademark a dictionary word but not if you are using it with goods and services that the dictionary word clearly describes (or deceptively misdescribes), and not if the dictionary word is the name of the good or service (like trying to register BEER for bottles of beer). The idea here is that traders are not permitted to monopolize the names of their goods and services thereby keeping others from calling the same goods and services by their name. The same rule applies for words that clearly describe goods and services. However, a dictionary word may be registered as a trademark where it is merely suggestive of the goods or services or arbitrary in relation to the good and services they are used with (like APPLE for Computers).
- What are Nice classes of goods and services?
The Nice Classification of goods and services is an international categorization system for goods and services that you may include in your trademark application. The system is comprised of thirty-four classes of goods and eleven classes of services. It standardizes trademark applications and registrations to allow for international registration through the Madrid Protocol. Canada has not yet made the Nice Classification mandatory, but will be doing so soon as it plans to fully accede to the Madrid Protocol system by 2019. We may now voluntarily classify goods and services in Canadian trademark applications according to the Nice Classification when filing trademark applications with CIPO.
- How do I navigate look-alike and sound-alike trademarks?
In cases of look-alike and sound-alike trademarks, the Trademark Office assesses whether consumers are likely to be confused on a case-by-case basis. In their assessment they consider factors including how similar the trademarks look or sound, how similar their meanings are, how similar the industries in which the trademarks will be used are, and other relevant factors delineated by the Trademarks Act.
- Will my personal information be available to the pubic when I file a trademark application?
The applicant's name and address will be available to the public when you file your trademark application and may be found in the Canadian Trademarks Database made available online by CIPO, along with information concerning your trademark. You may provide a business address instead of residential address.
- My spouse owned a trademark and he or she passed away. Do I own it now?
Unless your spouse has bequeathed it to someone else, you are the default heir of the trademark.
- May I assign or transfer my trademark registration to someone else?
Yes. Rights to a trademark are a form of property and may be sold or transferred.
- When should I apply to register my trademark?
You should do so as soon as you think you have found a word, phrase or design that you intend to use in commerce with goods or services. It is important to stake your claim to the trademark you wish to use as soon as possible.
Contact us for a complimentary initial telephone appointment to get started.
- How long does registration last?
A trademark registration lasts fifteen years in Canada and ten years in the United States from the date the trademark registration is originally granted. However, you are entitled to an unlimited number of renewal terms if you continue to use the trademark and pay the government mandated renewal fees.
- How much does registration cost?
The fees associated with a trademark application can vary. Aside from the fees of a trademark agent, in most cases, you will only need to pay a government filing fee and a government registration fee; in other cases, additional fees will apply. Please check the CIPO website for a complete schedule of trademark fees. If you choose to hire a trademark agent, that will be an additional cost on top of the fees listed in the CIPO trademark fee schedule.
- What do I need to consider before filing for registration?
Before filing a trademark application, you should search the Canadian Trademarks Database to determine if your trademark is confusing with a registered trademark, and potentially also search trade names registered in your province or country as those are often used as unregistered trademarks. You should also consider hiring a trademark lawyer or trademark agent to help you navigate through the trademark search and registration process.
Contact us for a complimentary initial telephone appointment if you would like our help with a trademark search.
- Can I file for a word and design together in the same trademark application?
If the words are part of your design and will be used in conjunction for commercial marketing purposes, you are permitted to file them together as one trademark application. However, the words are distinctive from the design (i.e. a company slogan and a company logo), and you do not plan to use them with the design, you will need to file separate trademark applications.
- Should any symbols be part of my trademark?
If you have a logo or another visual symbol that is evocative of your brand, you may and should trademark it.
- Is a trademark search necessary?
You are not required to execute a trademark search prior to filing an application for a trademark registration. However, searching will provide you with a better picture of whether your desired mark is available or not. Without first completing a trademark search your application may be rejected on the basis of another registered trademark that is identical or confusingly similar. Moreover, the owner of a previously used unregistered identical, or confusingly similar trademark may seek to oppose your application to register the trademark or worse, expose you to a risk of claims for infringement.
- I am debating between two trademarks. Can a search help?
Yes. If you have not settled on which mark to use on your goods and to advertise for your services, a trademark search may help to settle your debate. Hiring a trademark agent or trademark lawyer to complete a clearance search before you settle on your trademark can help to determine that your eventual trademark is available, and will in fact be distinctive of you.
Contact us for a complimentary initial telephone appointment if you would like our help with a trademark search.
- Is registration guaranteed and if not can I get a refund of the money I paid to apply?
Registration is contingent on your trademark being distinctive, registrable, not being successfully opposed by third parties, and complying with other provisions of the Trade-marks Act and Trade-marks Regulations. If your application is refused, no money will be refunded to you. The filing fee is a service fee for the conducted examination.
The Filing Process
- In whose name should I apply for my trademark?
Unless you are working in a joint venture or partnership under law, the trademark will only be granted to one person or entity, so you should apply in the name of the person or entity that will use or license use of the trademark.
- What is the best way to describe my trademark in an application?
To get the maximum level of protection, you should draft your application as broadly possible. This includes both the goods and services that you may currently be using the trademark with and with respect to the goods and services that you intend to use the trademark with in future. However, the goods and services must be drafted in ordinary commercial terms. This is a threshold test applied by the Trademarks Office and used by trademark examiners when reviewing applications.
- What happens to my application once it is filed?
Your application will be given an application number and assigned to a trademark examiner for technical and substantive review. Trademark examiners at CIPO are really busy and have many trademark applications to review and examine. It typically takes about 8 months before an examiner has completed its review of your application and send you an examiner’s report or approval notice.
- Can I add more products and services onto my trademark after it has been filed?
The description of goods and services in your application can be amended and limited but it cannot be amended to extend the scope of the goods and services as compared to those found in the original application.
- Am I protected between the filing and registration of my trademark?
Once you have filed an application, you will be assigned an application filing date, which will correspond to the date on which your trademark application was received by CIPO. Your application will have precedence over any application filed after your filing date unless another applicant claims an earlier date of first use, an earlier priority date, or can demonstrate through an opposition that they have prior entitlement to the mark.
- Will the trademark examiner check unregistered trademarks?
The trademark examiner will not look for unregistered trademarks specifically, but your trademark will be advertised in the Canadian Trademarks Journal after approval by the trademark examiner. During advertisement, entities who operate under the same or a confusingly similar trademark may oppose your registration if they have prior use or if they wish to challenge your application on other bases.
- What happens if I haven't started using the trademark I applied for and my application is allowed?
A trademark must be used prior to registration in Canada. If you do not use your trademark in a commercial manner within a certain extendable period from the allowance of your registration, your application will go abandoned, which will result in you having to file another application and go through the registration process again to secure a trademark registration.
- How long does obtaining a trademark registration take?
The trademark registration process can take anywhere from a few months to a few years. Most applications in Canada are processed within 12 to 24 months. The process tends to be slightly faster in the United States. U.S. trademark applications are generally processed within a year.
- How long can a trademark be registered?
A trademark can be registered for fifteen years in Canada and ten years in the U.S., but can be renewed at the end of the registration period for another full registration period indefinitely as long as the trademark continues to be used.
- What is the renewal process for a trademark registration?
When a trademark in Canada is set to expire, it may be renewed by paying a renewal fee to CIPO. You or your trademark agent will be sent a notice with a deadline shortly before the renewal date of your trademark.
Trademarks and Business
- How do I choose an effective trademark?
Trademarks have varying levels of strength. The levels of strength range from generic trademark to inherently distinctive trademarks. Generic marks are weak because it is hard to associate them with a particular source of goods and services. As a result they often fail to accumulate a significant level of consumer goodwill. The strongest marks tend to be abstract or fanciful. These marks are often inventive words and not words that are commonly present in the industry The most effective trademarks are typically as inventive or fanciful as possible and will have little meaning in the industry before they are registered (like EXXON for gasoline).
- What should I do if someone claims I am infringing on their trademark?
Allegations of infringement are serious and could lead to the initiation of a law suit against you. You ought to contact a trademark lawyer for advice specific to your particular circumstances.
Contact us for a complimentary initial telephone appointment if you would like our help with reviewing and responding to trademark infringement allegations.
- Why should a start-up company care about trademarks?
When you are starting a new business or developing a new product, it is easy to focus on the immediate goals rather than thinking about the potential dangers of trademark infringement down the line when your trademark has value. However, protecting yourself as soon as possible means having the confidence and security in the ability to enforce your exclusive right to the trademark across the country or region when you need it to protect your brand.
- How do I go about rebranding?
If you are hoping to change the name of your product, logo, or anything else, you will want to file a new trademark application corresponding to the new name or logo and ensure that it meets all relevant requirements for registration.
- Someone else is using my company's name as a domain name. How can I stop them?
Domain names are generally distributed on a first-come, first-serve basis, and are not required to be attached to trademark registrations. However, there are protections that exist if someone is cybersquatting on a domain name that is affiliated with your trademark. The World Intellectual Property Organization has created a solution called the WIPO Domain Name Dispute Resolution Service.
- How can I use my trademark to create a brand identity for my business?
Having a registered trademark increases the level of advertising and attention you can devote to your brand and the reputation it evokes without worry that it will be hijacked by someone else. As such, you can create a comprehensive trademark strategy that focuses on associating a positive response with your trademark.
- Why is it important to preserve evidence of use for my trademarks?
Evidence of use is crucial for two reasons. First, if you are operating under an unregistered trademark, you may need to prove both long-term ownership and accumulated goodwill to receive any protection, and evidence of using the trademark is paramount to doing both. Second, evidence of use will ensure that your trademark is never expunged for not being used in commerce.
Jurisdictional Trademark Issues
- In which jurisdiction should I register my trademark?
You should register your trademark in all or the most important jurisdictions in which you plan to distribute your product commercially.
- Is my trademark valid outside the jurisdiction in which it is registered?
Generally no, except where there is unregistered use or in the case of famous trademarks.
- Should I consider foreign trademark registrations?
If you foresee selling your goods and services in foreign countries, it may be advantageous for you to register your trademark in countries outside your home country to ensure that you can enforce exclusive rights to the trademark in that jurisdiction.
- What is the "Madrid System"?
The Protocol relating to the Madrid Agreement concerning the International Registration of Marks (Madrid Protocol) is a large-scale international effort to ease international trademark registrations and facilitate global commerce. It provides increased ease of international filings through a reciprocal trademark registration system between almost a hundred signatories. Administered by the World Intellectual Property Organization (WIPO), it allows trademark owners to register through a single application which entitles them to trademark protections in every country that is a signatory to the Protocol.
- Which countries are members of the Madrid System?
There are currently 97 member states in the Madrid System. Although Canada is not yet part of the system, it is planning to accede fully by 2019.
- What is "Convention Priority"?
Convention priority allows you to file trademark applications in foreign countries or regions within six months of filing in your home country and have the foreign application treated as if it were filed on the same date as your original application.
- Do all countries protect unregistered or common law trademarks?
Not all countries protect unregistered trademarks.
- Do I have to be a citizen or resident of the jurisdiction in which I am filing a trademark application?
No, you do not have to be a citizen or a resident of the country in which you are filing for trademark protection.
- What are geographical indications?
Geographic indications are any part of a name or design of a product that is capable of identifying where that product has originated (i.e. a name or a city or region, a picture of a common landmark, a color design using colours of a flag). As they are similar to a trademark in evoking an association made with the region by consumers, there are certain protections allotted to them by the World Trade Organization and many of its members. Geographical indications are often used as certification marks.