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Why You Should Hire a Trademark Professional to Prepare Your Trademark Application

By: Christopher Heer, Annette Latoszewska, Nikita Munjal | Last updated: August 10, 2022

Not unlike many others, when it comes time to think about registering your business or product name as a trademark, you may be inclined to prepare and submit an application yourself. After all, you know the mark, you know how you’re using it, and you know you own it, what more do you need? If your business is in the early stages, you may be reluctant to invest in your trademark by hiring a trademark professional. However, your trademark is a key business asset - the reputation you build, your business’ successes and acclaim are all tied to your trademark, and that is incredibly valuable. Consider the reputation attached to the Apple™ name, and the revenue that flows wholly to the company because the company is the only entity legally entitled to use the famous Apple name on, among others, cellphones. Registering your trademarks has been shown to raise the profitability of a business by 1.7% and the valuation of a business by 11.9%. By recognizing the value in a well-protected trademark, and considering filing an application to register your trademark, you’re already a step ahead - but it’s important not to undermine the value and efficacy of a trademark application in the course of cutting costs. One of the easiest ways to do that is by preparing your application yourself.

As of right now, trademark applications submitted to the Canadian Intellectual Property Office (CIPO) are typically reviewed for the first time by an examiner and a first office action (first correspondence relating to the application) is typically sent within 22 months – that’s almost 2 years before your application is looked at. How much more time is required to register your mark at that point depends on the content of the office action. In some cases, a trademark is immediately allowed. In others, an examiner issues an examiner’s report detailing defects in or objections to the application, which must be remedied by the applicant within 6 months of receiving the notification. It’s entirely possible for an application to receive more than one of these examiners’ reports, meaning the registration of the trademark, if eventually allowed, may be delayed for at least another several months if not more.

Working with a trademark professional helps to ensure not only that your trademark registers sooner rather than later, but also increases the likelihood that it registers at all. Trademark professionals can help you develop a trademark strategy that meets the needs and resources of your business. They can help you assess the best time to file and ensure that once you’re ready to prepare and file your application, this is done without delay.

The importance of applying sooner rather than later cannot be overstated. If you delay your application, you may find that someone else has filed for the same or a similar mark. You might be thinking “What are the odds?” and it may be quite unlikely that it occurs to someone to file an application for your exact mark in the time it takes you to do the same… but it may surprise you to know that a similar mark can also get in the way of your registration of your trademark. In Canada, an applicant does not need to demonstrate use of a trademark to obtain registration. As a result, some individuals (often labelled as ‘trademark trolls’) may apply to register your trademark before you do and hold the registration for ransom. Knowing that, it should be easier to understand the urgency to file.

After filing, a trademark application drafted by a trademark professional is in a better position to move through the trademark process without unnecessary delay. A trademark agent or trademark lawyer is not only well-versed in Canadian trademark law but also has the experience needed to draft an application in a form that reduces the likelihood of one or more examiner’s reports delaying your registration, preventing it altogether, and/or narrowing the scope of your registration when granted. By drafting your application yourself, without the knowledge and experience of an agent, you risk submitting an application which will need multiple revisions before the same is deemed allowable. Worse, if and when you receive an examiner’s report, should you elect to respond to the report again without the assistance of a trademark attorney, your response may not appropriately address the issues raised by the examiner and may therefore invite a further examiner’s report and the delay associated therewith.

In drafting your own trademark application, you also stand to omit one or more goods and/or services in association with which you use or intend to use your trademark. If not corrected, this error can limit the scope of your trademark protection and further may only be corrected by filing another trademark application (and paying another set of filing fees) – the goods/services included with your application can only be narrowed after filing and cannot be expanded. If you hope to amend your registration on the other hand, the process is similar. An application to extend the goods/services of a registration will be treated as a new application and will be examined just the same.

There’s also a possibility that your application may include goods and/or services in association with which you’ll never use your trademark. Non-use of a trademark as set out in the registration for that trademark can be a ground on which to expunge your registration from the trademark register. If your application misstates the goods/services in association with which you use your mark, you may lose your registration or may simply not receive the benefit of the trademark protection you were counting on. A trademark professional has dedicated their career to identifying the goods and/or services in association with which you use or intend to use your trademark and can strike a reasonable balance to ensure your application meets fewer objections from the trademark examiner assigned to your file.

Even if you include all of the appropriate goods and services in your application, you will need to ensure that these are properly described. If you have a foreign application for the mark, and perhaps are hoping to copy and paste the work done by your foreign attorney, you could be out of luck. Canada’s Intellectual Property Office has strict requirements for descriptions of goods and services in trademark applications. Our office has seen applicants exchange multiple communications months apart with the trademarks office to finally arrive at a description that is acceptable. A trademark professional has drafted, filed and prosecuted countless applications and benefits from having a much better idea as to what is likely to be accepted and what is not.

All of this to say that while this aspect of your application may seem straightforward, missteps are common and costly, both in terms of the protection to which an eventual registration may entitle you, and the additional expenses involved in remedying the same.

Another aspect of your description of goods and services is the classification of these into Nice Classes. This is a relatively new requirement for Canadian trademark applications. The Nice Classification groups goods and services into one of fourty-five categories (“classes”). Class 18, for example, includes mainly leather, imitations of leather and certain goods made of those materials, but importantly, this class does not include clothing, footwear, and headwear made from leather for dress by people. Unfamiliarity with class headings can lead to incorrect classification, which according to the Nice Classification, is one of the many reasons your application for a trademark may be issued an examiner’s report instead of a notice of approval.

Above all, drafting your application independently puts you at risk of filing for a trademark that is almost certainly unregistrable. A trademark professional can flag this risk when first presented with a mark and potentially save you the time, energy and money spent investing in an application that has very low odds of ever becoming a registration.

Your trademark may be unregistrable for a number of reasons. A common bar to the registration of a mark is a confusingly similar registered mark. You might have already checked for your mark in the trademark database and concluded that nothing so similar exists, however, the similarity you’re looking for may not capture all of the marks which could be cited against your application. A trademark professional has seen many of these objections and responded to many and is best positioned to conduct this search and review potentially problematic marks. Again, the outcome of this exercise could save you lots of time, energy and money.

By applying for a trademark yourself, you risk making an uninformed decision as to the representation of your mark to apply for. A trademark professional can help you prioritize among your intellectual property assets, if need be, and make strategic moves to make sure you’re getting the most out of your first, second, or tenth trademark application.

Finally, even after successfully obtaining registration, the owner of a registered trademark needs to take certain steps to maintain registration. A trademark registration in Canada is valid for 10 years and can be renewed upon payment of a prescribed fee to CIPO. A trademark professional can ensure your registration is up to date by, among other things, reminding you to file for extension, leaving you free to allocate your time and resources to growing your business.

At Heer Law, we often work with small businesses and start-ups who don’t yet have the resources to register every one of their intellectual property assets and help form intellectual property protection strategies that fit the business and the budget.

For help preparing and filing your trademark application, contact us today for a complimentary and confidential initial telephone appointment.