Trademark Services

Why should you register a trademark?

 

Trademark is a very important asset of your business. It helps distinguish your products and services from those of your competitors in the market. Over time, you may be able to create goodwill associated with your trademark so that the customers will favor your products and services such that you can enjoy many benefits, including better customer loyalty and profit margin.

Unlike patents and copyrights, trademarks do not expire after a set number of years. Therefore, a trademark can last forever if you continue to use the mark in commerce to indicate the source of goods and services. A trademark registration can also last forever if you file specific documents and pay fees at regular intervals.

With the new Trademark Act of the Canada, "use" is no longer required for the registration of a trademark. However, anyone will be able to challenge the registered trademark for the lack of use for a period of three-years. As such, you may consider applying for your desired trademark before starting to use it to test if your desired trademark is registrable without incurring the cost of actually using the trademark. After the successful registration, you can then start using the trademark to avoid the trademark from being cancelled due to non-use.

​​If you ​are considering expanding your business into the United States, you should also consider obtaining a trademark registration in the United States.

Unlike Canada, the registration of a trademark in the United States requires use of commerce of the trademark in the United States if the trademark application is a stand-alone application in the United States. However, the showing of use in the United States can be avoided initially when the registration in the United States is based on a registration in a foreign country, for example, Canada.

 

As a result, if a registered trademark in both Canada and the United States is desired, you may consider apply for the trademark registration in Canada first. Within six month, an application to register the trademark in United States can be filed, claiming the earlier application date (priority date) of the Canadian application. Then, after the trademark is registered in Canada, the trademark may be registered in the United States based on the registration in Canada.

 

It is worth noting that a showing of use in commerce in the United States is required five years after the registration in the United Sates. Therefore, you will need to start using the trademark in the United States after the registration there.

Some of the primary trademark services that we provide are listed below. 

Trademark Services

  • Trademark Search

  • Trademark Filing and Prosecution

  • Trademark Monitoring

  • Trademark Opposition

  • Trademark Cancellation

  • Trademark Renewal

As an initial matter, please note that you are not required to hire a trademark practitioner to represent you in front of the Canadian Intellectual Property Office (CIPO) regarding trademark matters. As such, it is your decision whether to hire a trademark practitioner based on your situation and needs.

 

On the other hand, as a Canadian applicant, you are required to hire an attorney admitted in the United States to represent you in front of the United States Patent and Trademark Office (USPTO) in trademark matters.

 

As a CIPO registered trademark agent and an attorney registered in New York, we will be able to help you in front of both CIPO and USPTO in trademark matters. We can also help you with trademark matters around the world through our foreign associates.

Trademark Search

Before applying to register your trademark, it is important to conduct a trademark search to make sure your intended trademark is not being used by another party. Based on the search results, you may be able to determine by yourself the likelihood that your desired trademark will be registered or have a trademark practitioner help you to analyze the search results. The determination may help reduce the chance that the application for registration being rejected, thus saving you time and resources.

 

When doing the search, you may choose from many trademark databases available. Some of the databases are free. For example, the trademark databases of the USPTO and CIPO are free. Some commercial databases enable the search of trademarks of Canada, United States, the individual states of the United States, and common law trademarks.

If you trademark has not been used, trademark search could be advantageous to you because it will reduce the chance that you will infringe other party's trademark. It can also save you the headache of having to change your trademark after you build your brand around the trademark. 

 

Of course, if you have used your trademark for a substantial period of time and accumulated goodwill in the market, then you should apply for registration of the trademark regardless of the search result. In any case, using a new trademark and building goodwill will take significant time and resources. In the meantime, you may consider cancelling the conflicting trademark of a third party to avoid potential issues.

Trademark Filing and Prosecution

After determining that your desired trademark is likely to be granted, you can proceed to apply for the trademark.

In Canada, you may consider applying for trademark by yourself. The electronic filing system provided by CIPO is relatively user-friendly.

Both the trademark offices in Canada and the United States have more stringent requirements with respect to the specificity of the terms for the goods and services than most other jurisdictions in the world. To avoid spending a lot of time and resources to overcome this type of objections, we recommend using the terms pre-approved by CIPO and USPTO, which are listed in the Goods and Services Manual (CIPO) and the ID Manual (USPTO). However, if there are no pre-approved terms for your goods and services, you will have to explain to the trademark examiner in the prosecution process.

Trademark Monitoring

After your trademark is registered and you start to build your brand around the trademark, it is advantageous for you to monitor the use and application for registration of a trademark that is similar to your registered trademark. A trademark that is similar to your registered trademark may confuse your consumers and even result in dilution of the value of your trademark.

Trademark Opposition

In the application process for trademark registration, there will be a period for opposition if the trademark office approves the trademark to let the public to oppose the registration of the trademark.

 

Once you notice an application for registration of a trademark that is similar to your trademark, you should consider filing an opposition to the registration of the trademark.

 

Of course, in your application for a trademark registration, your registration may be opposed by a third party.

The opposition process is one of the more difficult aspects of the application for trademark registration. We recommend hiring a trademark practitioner to oppose the registration of a trademark or respond to an opposition to the registration of your trademark.

Trademark Cancellation

 

Sometimes you will need to cancel someone else's trademark. For example, a registered trademark may be cited against your application for registration and there is no way to convince the trademark examiners that your application should not be rejected despite the cited trademark.

There are usually two ways to cancel a trademark registration in Canada.

 

The first one is cancellation for non-use for a period of three years. The basic process is that you submit a request to the trademark office to ask the owner of the registered trademark to show use. If the owner of the registered trademark fails to show the use of the registered trademark, then the trademark may be cancelled. You may consider hiring a trademark practitioner to do this on your behalf.

The second one is to apply to the court to cancel the registration. You should seriously consider hiring a lawyer experienced in this process to help you. Although we are qualified to provide this service, we choose not to engage in this practice for business reasons.  

Likewise, you may someday face an effort to cancel your trademark registration for various reasons.

Trademark Renewal

Every ten years after the registration, you will need to pay a renewal fee to renew the registration in Canada.

Additional filings are required to maintain your trademark registration in the United States, for example, the showing of use in the United States.

Ready to get started? Contact us for a free and confidential consultation.