Trademarks

It is our practice to perform a search of the Canadian Trademark Office’s database in order to ascertain the availability of your mark. In addition, it may be prudent to search unregistered trademarks such as trade names, which may have common-law rights. The cost of the search is often far less than the cost associated with changing the mark later if it is determined that there is a prior user. After determining that the goods and/or services you intend to provide in association with the proposed mark, we will perform the search, analyze the results and report to you.

If the search does not reveal any marks that may have an effect on the registration of your mark, the next step is to file a trademark application. This stage involves the preparation of the application based on a consideration of the goods and services to be used in association of the mark. The application is submitted to the Trademarks Office along with the appropriate government filing fee.

Once a trademark application is filed it must be reviewed by a Trademark Office Examiner who typically issues one or more Office Actions (objections) to which we must respond. In Canada a first Office Action is typically issued 6 to 8 months after the initial filing date.

If and when the Examiner’s objections are dealt with, the application will be advertised in the Trademarks Journal, a weekly publication issued by the Trademarks Office listing new trademark applications. This allows any member of the public an opportunity to oppose or object to the application. In Canada the opposition period is two months from the date of publication.

After advertisement without objections, a Notice of Allowance will be issued. The applicant will be required to submit the registration fee and, if the mark is based on prior, a Declaration of Use.

Following satisfaction of the requirements for registration, including payment of the registration fee, the application becomes a “registered trademark” and is so recorded in the Trademark Office database. A trademark can be registered indefinitely, provided there is continued use of the mark, however, the registration must be renewed every fifteen years.

A trademark is a word or design used by a business to distinguish its goods or services from those of competitors. There are two types of trademarks. Word marks are words, letters, numbers or combinations of them. Design marks are words written in a special style such as the Coca-Cola design, pure designs without words such as the Mercedes-Benz star, or a combination of words and designs.

The first step is to choose a suitable word or design to identify the goods or services. Trademark rights to the word or design are acquired by applying to register the trademark or by commencing use of the trademark. Unlike corporate names, it is not possible to reserve a trademark. There is always some risk that someone else will claim prior rights to a trademark after an application is filed or after use has started.

The Trademarks Office will not register a trademark which is confusing with a registered trademark or with a trademark in another application having priority. The application with the earliest date, either the filing date or the date of first use, has priority. Use of a trademark confusing with a registered mark may make the user liable for damages if legal action is taken for trademark infringement. In addition, if registration of a trademark is desired, it must not be clearly descriptive of the goods or services it identifies. An example of a clearly descriptive mark is SUPERWASH to identify woolen goods. On the other hand, trademarks may be registered if they are merely suggestive of the goods and services. An example is WATER WOOL for woolen goods. The assistance of an experienced trademark agent is usually needed to decide whether a mark is clearly descriptive or not. A trademark normally cannot be registered if it is nothing more than a surname. An example is JONES to identify wine. However ELDERS may be registered for wine because, while it is a surname, it has another meaning. Clearly descriptive trademarks or surnames may be registered after a period of extensive use. An example is the trademark MCDONALDS. There are other marks which cannot be registered, such as the name of the goods or services in any language, various flags, coats of arms and marks confusing with marks adopted by public authorities. A trademark agent should therefore be consulted before deciding on a mark.

The strength of a trademark is related to a factor called “distinctiveness”. A trademark is not very distinctive, and is therefore a weak one, if it is descriptive of the goods or services, a surname, initials or constitutes words commonly used in conjunction with the goods or services. Adopting unconventional spelling of words usually doesn’t help. Such marks make little impact on the mind of the consumer and therefore do not adequately direct him or her to goods or services of one person rather than competitors. However, such marks can become distinctive, and therefore valuable, by extensive use and advertising. The most distinctive type of trademark is an arbitrary word without meaning such as KODAK. Such trademarks become strongest after extensive usage. Use of such marks by others on any goods or services likely would be trademark infringement. However, many trademark owners do not like arbitrary or meaningless words because they initially create no favourable impression in the mind of the consumer. This may be very important from a marketing point of view, at least until a mark becomes well known. For this reason, the best compromise is usually a trademark which suggests some favourable characteristic of the product or service but does not clearly describe it.

The best way to try to avoid conflicts with earlier trademarks is to have a trademark search done. An experienced registered trademark agent can offer preliminary advice before doing the search. It may be advisable to have a few alternative trademarks ready. After the search is done, the agent gives an opinion as to whether or not the trademark appears to be available for registration. It may take considerable experience to decide whether a trademark is confusing with one found in the search, particularly if the marks are similar and their goods or services are also similar. Search results are not completely reliable though. There is some risk that conflicts with other marks will be found later. To start a search, the agent needs to know the trademark itself and the goods and/or services the mark identifies or will identify.

An application is filed by the Trademark Agent with the Canadian Trademarks Office. There are no provincial trademark registrations in Canada. People sometimes speak of registering their name in Victoria. This refers to trade names or business names and not to trademarks. Registration in Victoria confers no right to use the name as a trademark. Federal trademark laws take priority. After the application is filed, the Trademarks Office sends a filing notice which merely acknowledges receipt of the application and gives a filing date and an application number. A few months later, the application is reviewed by an Examiner at the Trademarks Office who conducts another search to see if there other confusing marks. If a confusing trademark is not found, and there are no other objections, such as descriptiveness or that the mark is a surname, then the trademark is approved for advertisement in the Trademarks Journal. If objections are made, then the Examiner sends an Examiner’s Report listing objections to registration. A period of time, usually six months, is given to respond. Often an experienced trademark agent can overcome objections by presenting arguments in favour of registration of the trademark. The Trademarks Journal is published by the Trademarks Office and lists trademarks which the Office proposes registering. Other parties then have the opportunity to oppose the registration of the published marks, usually on the grounds of prior use or registration of a similar trademark. If an opposition is filed, which occurs in only a small percentage of cases, the matter is decided by opposition proceedings. These are generally similar to a trial but are conducted mainly by written submissions and are much less expensive. If no opposition is filed, then the trademark application is allowed. If the trademark was already in use at the time the application was filed, then the only remaining step is paying the registration fee. If the trademark was not in use at the time the application was filed, then it is also necessary to file a declaration stating that use of the trademark has started.

An application may be filed either before or after use of a trademark starts. An application takes a minimum of one year to be approved and so trademark owners should file applications for proposed trademarks, or a few alternatives, a year or more before they plan on using the marks. Often such advanced planning is not possible, and the trademark owner then may have to change the mark if problems develop, particularly conflicts with other trademarks.

A trademark is used on goods when the mark appears on the goods, or packaging or labeling for the goods, and the goods are sold in the normal course of trade. A trademark is not used on goods when it appears in advertisements for the goods or if the sale of the goods is an isolated one or if they are distributed free. A trademark is used on services, for example restaurants, retail stores, construction contractors or musical bands, when the mark appears in advertisements or promotional material for the services and such services are actually available at that time.

Generally a separate trademark application is required in each country where protection is desired. Canadian trademark owners should seriously consider registration of their trademarks in the United States. Otherwise, later expansion into the United States may be prohibited, or a change of trademark required, if the mark is later found to be unavailable there. If registration in the United States is essential or desirable, then it may be advisable to do a U.S. trademark search before a Canadian search. It is generally more difficult to find an available trademark in the United States. If the trademark appears to be available in the United States and Canada, then a Canadian application should be filed first. The United States application may be filed up to six months after the Canadian application and will get the filing date of the Canadian application. No use of the trademark in the United States is required to obtain registration if this procedure is followed. Applications in other foreign countries should also be filed within six months of filing the Canadian application. They also get the filing date of the Canadian application under the International Convention.