Basics of Trademarks
- What is a trademark?
A trademark, also referred to as a trade-mark (Canada pre-2019) or a trade mark (UK), may be one or a combination of words, sounds, designs, tastes, colours, textures, scents, moving images, three-dimensional shapes, modes of packaging or holograms that distinguish an individual’s or a company’s goods or services from others in the marketplace. If functioning properly, trademarks will direct a consumer to the owner’s goods or services. This in turn creates goodwill, which is the reputation the trademark owner has acquired with consumers.
Another type of trademark is a certification mark, which can be licensed to people or companies for the purpose of showing that the associated goods or services meet a defined standard. For example, Canadian trademark registration no. TMA1011919, belonging to Dairy Farmers of Canada, is used to indicate products made with exclusively Canadian milk.
- 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 a name or a surname, clearly descriptive or deceptively misdescriptive words or marks, marks that refer to the geographic origin of your product or service, 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 Trade-marks 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 now for a complimentary and confidential initial telephone appointment if this is a concern for you.
- What are the benefits to a trademark registration?
A trademark registration grants the owner the right to the exclusive use of the mark across Canada for the goods and services designated in the registration. A trademark registration also assists the owner in enforcing these rights, as the registration is considered to be direct evidence of ownership.
Obtaining registration of a trademark in Canada provides the owner with additional legal remedies that are not available to an owner of an unregistered trade-mark, including Federal Court infringement actions and dispute resolution remedies regarding domain names on the Internet.
Applying for and registering a trademark in Canada, will block any subsequent applicants from registering a confusingly similar mark, as the Trademarks Office will cite the prior filed or registered mark against applicants who attempt to register the confusingly similar mark. As the Trademark Register is public, an applied-for or registered mark should appear in an availability search conducted by a potential applicant for a confusingly similar mark and deter this party from filing or adopting the mark.
The owner of a trademark registration can renew their registration every ten years. If the registered mark is continuously used appropriately by the owner, and renewed every ten years, their exclusive rights to the use of the mark in Canada are indefinite for the goods and services set out in the registration.
The Province of Québec has its own special French language requirements that are protected by the provincial Charter of the French Language. Owning a registered trademark provides an exception to the requirements of this Charter, making it easier for trademark owners to brand their products and services.
Read more about the benefits of registering your trademark in Canada.
- What are the steps to obtaining a trademark registration?
To obtain a Canadian trademark registration, you must apply to the Canadian Intellectual Property Office (CIPO). A CIPO trademark application will need to be accompanied by the $336 government filing fee plus an additional $102 for each additional class of goods and services beyond the first. Prior to filing your application, it is recommended that you conduct a search of CIPO’s Trademark Register for pending and registered marks that may be considered confusingly similar with your trademark, as well as an Internet search for trademarks that are in use, to ensure that the trademark you want to use is available for use and registration.
Once your application has been filed it be will be assigned to a trademark examiner who will review the application and conduct a search on the Register for any marks that are considered confusingly similar. If the examiner notes any deficiencies in the application, or uncovers a confusingly similar mark during the search, an examiner’s report will issue, and the applicant must resolve the objection to registration.
If the application is acceptable, it will be approved and then advertised in the Canadian Trademarks Journal, which is a weekly online publication of the Canadian Intellectual Property Office. The purpose of advertisement is to alert the owners of other trademarks that the advertised mark is proceeding to registration. Upon advertisement, there is a two-month period during which any third party that can show valid grounds can oppose the application. In the case of owners of unregistered trademarks, one such ground is that the advertised mark is confusingly similar with the unregistered marks which would not have been reviewed by the examiner. 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?
Currently, the Canadian Intellectual Property Office estimates that applications will be reviewed by an examiner within 15 to 18 months from the date of filing.
- 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 18 to 24 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 function as the owner’s brand and to distinguish the owner’s products or services in the marketplace from the products or services of others. Patents, on the other hand, protect inventions, industrial designs protect aesthetic designs and copyright protects original works like original pieces of art, music or literature. A trademark may also be protected by copyright, for example, where it consists of a design or sound.
- 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 or words symbol, design, logo, etc. that the owner uses to identify the source of the owner’s 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 Google Ads 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 protections under the Trade-marks Act, including protection nationwide. In order to obtain a registered trademark, you have to apply for a registration with the Canadian Intellectual Property Office (or the Intellectual Property Office in other countries) and continue to renew the registration as required in that country. In return, your trademark registration is presumed to have validity, with any burden of proof to invalidate the registration resting on the challenger.
In Canada, 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 must 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 Canada and the United States.
- What do the symbols ® and ™ communicate?
Although there are no official rules as to the use of the ® and ™ symbols commonly seen tacked onto trademarks, and no obligation to use either, ® should indicate a registered trademark, whereas ™ can indicate ownership of unregistered marks. The French equivalents of these symbols are the letters “MD” (Marque Déposée) and “MC” (Marque de Commerce), respectively. In the United States, “SM” may also be seen and indicates ownership of an unregistered mark in association with a service.
There are advantages to marking your trademark with one of these symbols. Perhaps most importantly, the symbol serves as notice of trademark ownership and may deter competitors from attempting to profit off of your brand’s goodwill.
- 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 must function as a source indicator of the owner’s products or services 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 can be lengthy, cumbersome, and sometimes complicated. Where desired, a trademark agent can conduct a comprehensive 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 Canadian Intellectual Property Office. Agents often know how to avoid problems during the application process and are keenly aware of the very strict deadlines that apply throughout the process. Proper preparation and prosecution of applications for registration of a trademark is a skill that requires training and experience. Errors in drafting an application can result in time and money wasted. This is another important reason to work with a trademark agent who is experienced and skilled in the 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 now for a complimentary and confidential 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, identical trademarks may co-exist in different classes, or categories, of goods or services, provided that such use would not result in consumers being confused as to the origin of the goods and services. For example, the trademark “MAC” is registered both for use in association with the solicitation and sale of mortgage back securities and with chainsaw parts.
- 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 be determined on a case-by-case basis. Approval of your name in the context of the incorporation process does not signify you having rights to the use of the name as a trademark. There may be prior use of a registered or unregistered trademark that could preclude you from adopting and registering your corporate name as your trademark. If you want to use your corporate name as your trademark it 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 now for a complimentary and confidential initial telephone appointment if you want 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. It may be preferable to register your trademark in standard characters, specifically, all capital letters, which will protect the mark in any case, font or colour that it is depicted. In the case of a logo, you may wish to file for a black and white version, which will protect the logo in any colours that it may be depicted.
- Can I register a trademark that is comprised of ordinary dictionary words?
It may be possible to register a trademark that is comprised of a dictionary word or words 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 associated goods 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 goods and services thereby keeping others from calling the same goods and services by name. However, a dictionary word or words may be registered as a trademark if the mark 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, comprised of thirty-four classes of goods and eleven classes of services. When preparing an application for registration of a trademark, the goods and/or services with which you wish to use the mark must be designated in the application and grouped under the appropriate classes. If goods or services are improperly classified, upon examination of the application by the Canadian Intellectual Property Office an examiner’s report will issue requiring the applicant to reclassify the misclassed goods or services.
- How do I navigate look-alike and sound-alike trademarks?
In cases of look-alike and sound-alike trademarks, a trademark examiner of the Canadian Intellectual Property 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 goods and services associated with the trademarks are, how the goods or services are marketed, and other relevant factors delineated by the Trade-marks Act. Although it is ultimately up to the examiner, an experienced trademark agent can provide an opinion as to the likely registrability of your mark where look-alike and/or sound-alike marks exist.
Contact us now for a complimentary and confidential initial telephone appointment if you would like our help with a trademark search and opinion.
- The trademark I hoped to register has been registered by someone else but is not being used, do I have to pick something else?
It is not uncommon to find trademarks on the register that appear to have never been used in commerce. Intellectual property professionals have a term for individuals who register marks with no intention of using them: trademark trolls. These individuals commonly obtain trademark registrations with the goal of subsequently extracting money from individuals and businesses desirous of the rights to the marks. Your options in the situation where your mark is taken generally include 1) pursuing a different trademark 2) acquiring the rights from the current owner and 3) if it has been more than 3 years from the date of registration, you may request that the Office require the owner to prove their use, absent which the mark may be expunged.
- Will my personal information be available to the public when I file a trademark application?
All the information designated in the application, including the applicant’s name and address, will be available to the public and can be found on the Canadian trademarks database, which is accessible and searchable on the website of the Canadian Intellectual Property Office. 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. The change in ownership can be recorded in the trademark register on request.
- 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. Furthermore, establishing your filing date will be a block to others who apply for registration of a confusingly similar trademark after your application has been filed.
Contact us now for a complimentary and confidential initial telephone appointment to get started.
- How long does registration last?
A trademark registration lasts ten years in Canada (fifteen years for registrations under the pre-June 17, 2019 version of the Trade-marks Act) 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 website of the Canadian Intellectual Property Office (CIPO) 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 pending or 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 now for a complimentary and confidential 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 you wish to register a logo that contains words and a design, you are permitted to file them together as one trademark. However, if the words and the design are two separate trademarks, you will need to file separate trademark applications, as it is not permissible to apply for more than one trademark per application.
- 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 consider registering it as a trademark.
- 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 trademark that is confusingly similar with your trademark may seek to oppose your application for registration or initiate legal action to prevent you from using the trademark.
- I am debating between two trademarks. Can a search help?
Yes. If you have not settled on which mark to use in association with your goods or 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 whether your contemplated mark is available, and will in fact be distinctive of you.
Contact us now for a complimentary and confidential 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 government filing fee is a service fee to the Canadian Intellectual Property Office for conducting examination of your application and applied-for trademark.
The Filing Process
- In whose name should I apply for my trademark?
Unless you are part of a joint venture or partnership under law, the trademark will only be granted to one person or business entity, so you should apply in the name of the person or business entity that will use or license use of the trademark.
- What is the best way to describe my goods or services in a trademark application?
To get the maximum level of protection, you should draft the description of goods and services as broadly as possible. This includes both the goods and services that you may currently be using the trademark with and the goods and services with which you intend to use the trademark 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 the Canadian Intellectual Property Office are really busy and have many trademark applications to review and examine. It currently takes about 15 to 18 months before an examiner has completed its review of your application and sends 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 priority over any application filed after your filing date for a confusingly similar trademark and will be blocked from registration by your earlier filed application unless another applicant claims an earlier date of first use, or can demonstrate through an opposition that they have prior entitlement to the mark.
If you are already using the mark for which you applied, you may be able to rely on unregistered trademark rights in the interim period prior to your registration being finalized.
- 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, third parties 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 does not need to be used prior to registration in Canada. Once allowed, your application will proceed to registration upon submission of the prescribed government registration fee of $204 CAD for applications filed before June 17, 2019 and without the registration fee for applications filed after June 17, 2019. If, after 3 years, you still haven’t started using your trademark, your registration is liable to be expunged or amended. In this case, you would receive a notice from the Trademark Office requiring you to provide evidence of use.
- How long does obtaining a trademark registration take?
Depending on the country where the application is filed, the trademark registration process can take anywhere from a few months to a few years. Most applications in Canada are processed within 18 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?
Currently, a trademark can be registered for ten years in Canada and ten years in the United States 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 the $408 CAD plus $127.50 per additional class renewal fee to the Canadian Intellectual Property Office. 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 weaker less distinctive trademarks to highly distinctive trademarks. Weak marks may be descriptive and difficult to associate with a particular source of goods and services. As a result, it is difficult to enforce exclusive rights and the mark often fails 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 their trademark?
Allegations of infringement are serious and could lead to the initiation of a lawsuit against you. You should contact a trademark lawyer for advice specific to your particular circumstances.
Contact us now for a complimentary and confidential initial telephone appointment if you want our help with evaluating 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 securing registration of your trademark or the potential dangers of trademark infringement. However, protecting yourself as soon as possible means having the confidence and security in your ability to enforce your exclusive right to the use of 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 first conduct an availability search to ensure the trademark is available for adoption, use and registration and if the mark appears available, 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. Canada has joined the Madrid Protocol and Canadians and Canadian business entities are permitted to file international trademark applications as of June 17, 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.
If you would like our help with trademarks, please make a complimentary and confidential no-obligation appointment with a member of our team.