Trademark Application Process and Associated Costs

Two of the questions most commonly asked by business owners is the cost and how long it takes to register a trademark.

 

Generally speaking, it can take 1-2 years and cost $1000-3000 before a trademark is registered or refused.

 

Without knowing the trademark and associated goods and services, we will only be able to discuss the cost in association with different stages of the application process in a general sense to help you make an informed decision.

 

Obviously, we cannot speak for other practitioners. The costs discussed below only reflect our experience.

The flowchart shows the typical Trademark Application Process, which primarily includes the following stages:

1.      Trademark search (optional)

2.      Filing a Trademark Application

3.      Responding to Examiner's Report or Office Action if issued

4.      The application is approved for advertisement or refused
5.      Responding to opposition if there is one
6.      The trademark is registered or refused
7.      Renewing the Trademark

We discuss these stages in more detail below.

1.      Trademark search (optional)

Although not required, it may be desirable to conduct a trademark search before the application is filed. This can help evaluate the likelihood that your desired trademark can be registered. For example, an identical or similar trademark may have already been registered, or an application therefor has already been filed, or is currently in use.

 

There are usually two types of trademark searches. One type is a search in the CIPO trademark database for registered trademarks and trademark applications that are similar to your desired trademark. Another type is a search in the CIPO trademark database, the Business Name register, and Web Common Law for trademarks that are similar to your desired trademark. At the end of the search, an opinion is provided with respect to your desired trademark in view of the search results. The trademark search costs about $600-1200.

 

If the search result is favorable, you can proceed with the application knowing that it is likely that your trademark can be registered. On the other hand, if the search result is not favorable, you may consider apply to register another trademark. After you decide to apply to register another trademark, a new search may be conducted to evaluate the likelihood to register this trademark.

 

If you so desire, you can do the trademark search by yourself. For example, you can start by searching the CIPO trademark database or the USPTO trademark database.

 

In some situations, it may not be worth it to conduct the trademark search. For example, you may have a trademark that you have been using for years, for which a good reputation has been established. To change your trademark based on the search results may force you to put in the work and investment to establish reputation for your new trademark, while giving up the resources you have already spent on your current trademark. As such, you may try to register your trademark regardless of the possible search results.

2.      Filing a Trademark Application

After you decide what trademark you want to register, in view of the search result if one is conducted, an application can be filed for the trademark.

 

You can file the trademark application by yourself or hire a trademark agent to filed the application for you.

 

In the application, you will need to include statement of the goods and services that you want to associate with the trademark. In Canada, the statement is required to include ordinary commercial terms.

 

If a trademark agent is retained to file the trademark application for you, the trademark agent can advise the statement to use based on the goods and services that are more likely to be acceptable to the Trademarks Office.

 

The cost for filing a trademark application depends on the number of classes the goods and services belong to. The classes are determined based on the Nice Classification system. For example, machines are in class 7, while clothing is in class 25. For the first class, the government fee for 2021 is $336.60 for the first class of goods or services in the application, and $102 for each additional class. If you decide to hire a trademark agent to file the application to file the application for you, you can expect to pay about $500-600 for the first one or two classes, then about $100 for each additional class.

3.      Responding to Examiner's Report or Office Action if issued

Applications to register trademarks are examined by the Trademarks Office to determine whether the trademark is registrable.

 

Sometimes, the Trademarks Office may have issues regarding the registrability of the trademark. An Examiner's Report, also called Office Action, will then be issued to you or your trademark agent if you hired one. You will then have to respond to the Examiner's Report by making arguments and/or revising the application.

 

You can certainly try to respond to the Examiner's Report by yourself. However, if you decide to hire a trademark agent to respond to the Examiner's Report for you, the cost will usually be between $200-800, depending on the complexity of the Examiner's Report. There may be more than one Examiner's Reports and responses thereto in the application process.

4.      The application is approved for advertisement or refused

If the Trademarks Office determines that the trademark is registrable in association with the statement of goods and services, the trademark will be approved for advertisement.

 

If the Trademarks Office is convinced by the arguments and/or the revision of the trademark application in response the Examiner's Report that the trademark is registrable in association with the goods and services, then the application for registering the trademark will be approved for advertisement.

 

On the other hand, the application for registering the trademark may be refused after several Examiner's Reports and the responses thereto. As this stage, you may give up the application or appeal the decision to the Federal Court. Obviously, it will be very expensive to appeal to the Federal Court. You will have to seriously consider the value and importance of the trademark when deciding whether to appeal. Consultation with a lawyer experienced in Trademark law is recommended to help you make the decision. If you do decide to appeal, it is recommended that you retain a lawyer experienced in Trademark law to help you with the appeal.

5.      Responding to opposition if there is one

After the application is approved for advertisement, the particulars of the trademark application will be advertised in the Trademarks Journal.

 

In rare circumstances, an opposition may be filed against the registration of your trademark by a third party. Responding to an opposition could be an expensive proposition, costing tens of thousands of dollars. As such, you should give it considerable thought and we recommend you hire a trademark agent to assist you in this endeavour.

 

Fortunately, the chance of facing an opposition is low. In addition, the chance can be further reduced if a trademark search is conducted and necessary steps are taken in response to the search result.

6.      The trademark is registered or refused

If no opposition is filed within two months after the advertisement or the opposition is rejected, the trademark is registered.

 

However, if an opposition is filed and you are not able to overcome the opposition, the trademark application will be refused. After this refusal, you may appeal the decision to the Federal Court of Canada. As discussed earlier, we recommend you consult a lawyer to help you make the decision whether to appeal and the appeal process if you do decide to appeal.

7.      Renewing the Trademark

Every ten years after the trademark is registered, you will need to pay the renewal fee to the Trademarks Office. You can pay the renewal fee by yourself or have a trademark agent to pay the renewal fee for you. The renewal fee is adjusted on the first day of each year. In 2021, the government fee is $408.00 for the first class and $127.50 for each additional class. If you decide to hire a trademark agent to pay the renewal fee for you, it usually will cost $150-300 for service fees.

If you are ready to proceed, please contact for a free consultation.