Trademark Basics

What is a trademark, why should you register a trademark, what does it cost to register a trademark and more answers to basic trademark questions. Understanding the fundamental concepts of trademark registration will help you to protect your brand and grow your business.

Dave MacDonell

Dave MacDonell

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What is a trademark?

A trademark is a legal and business tool that allows you to have a unique identity in the marketplace. Any special element that you use to promote and distinguish your business (and the services or products you sell) from others can be a trademark. This means a trademark could be:

  • A logo
  • A name
  • A slogan
  • Colours
  • Packaging (shape, colour, etc.)
  • Sounds

Or any combination of these. You can also trademark a description that is not typically associated with a product or service (so long as the description is not misleading) and original coined terms that don’t have a dictionary definition. Business or company names that are too descriptive, using words or practices that are commonly used, don’t usually qualify and make for weaker marks in any event. Examples of trademarks include:

These logos, names and slogans have become synonymous with each brand’s identity. Back to top

What can’t be registered as a trademark?

Well might you ask. In fact, plenty of things cannot be registered as a trademark. These include:

  • With some exceptions, names and surnames (like John Doe)
  • Clearly descriptive marks (like “cold” for ice cream or “lather” for shampoo)
  • Deceptively misdescriptive marks—words that are misleading (like “air express” for bicycle couriers)
  • Places of origin or geographic location (like “Canada” for bacon or maple syrup or “Montreal fashions” that are not produced exclusively in Montreal)
  • Clearly descriptive words in other languages (like “Chai” for tea or “manteau” for coat, but “Chai” for coat could be registered)
  • Words that are confusingly close to another registered trademark or pending trademark (like “The James Bay Company” for a department store)
  • Words that resemble prohibited marks, including:
  1. Official government designs like flags
  2. Coats of arms of royal family and provinces, territories and municipalities
  3. Emblems of the Red Cross, Red Crescent and United Nations
  4. Crests, coats of arms, flags and symbols of other countries
  5. Symbols of public institutions
  6. Racial slurs
  7. Obscene depictions
  8. Profane language
  9. Portraits or signatures of living persons or those who have died in the last thirty years, unless you have formal permission
  10. Plant-variety denominations
  11. Origin of wine or spirits not actually produced in that region

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What’s the difference between a trade name and a trademark?

While these terms are easily confused, a trade name is the name an individual or organization uses to conduct their business (it can be the registered business name, or the incorporated name), while the trademark is the unique “mark” used to distinguish your business in the marketplace. Just because you have a trade name, even a registered tradename, does not mean that you have a trademark. Back to top

Who can register a trademark?

Any individual, organization, business, trade union or association may apply to register their mark.Back to top

Why should I register my trademark?

Just as a marriage can be registered officially or remain common-law, so can a trademark. That means that it exists and you have legal rights around it as soon as you begin to use it. Still, a common-law trademark is weak in comparison to a registered trademark. Say for example that someone uses your trademark and you sue them. It can be much harder to prove your case if the mark is unregistered (common-law) and you would be able to bring a “passing off” action, but not an infringement claim. Also, your rights under common law are restricted to the specific regions (Toronto, say, or Sudbury) where you have established a reputation. Registered trademarks are valid Canada-wide. Some more advantages to registering a trademark:

  • Your trademark will be in effect across Canada, even if your business is restricted to just part of a city or province.
  • No one else in Canada can register the same mark.
  • Anyone who tries to adopt a similar trademark can be sued for infringement with all of the remedies available under the Trademarks Act.
  • The longer your trademark has been registered, the more difficult it becomes for third parties to challenge it, so long as you’ve continued to use it consistently.
  • Licensing your trademark—for franchises, say—is much easier if it is registered.
  • Your first application to register can give you certain benefits in many other jurisdictions, for example, access to a “priority” (or earlier) filing date.
  • Registering your trademark adds to the cultural value of your business. It may well add to its capital value as well if you are seeking investors, because trademark registration is like an asset in itself.

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When should I register my trademark?

It’s best to register as soon as you begin to affiliate your brand or identity with your unique “mark”—the word, logo, phrase or other unique thing that becomes your trademark. As you begin the registration process , you might discover that someone is already using a similar or identical mark. It’s better to find out early than several years after using it and establishing your brand identity. If you were sued for trademark infringement, you would likely have to abandon your trademark and pay damages to the true owner.  You can even apply to register before you’ve actually begun using your mark. Back to top

How long does the trademark registration process take?

A simple, straightforward trademark registration generally takes 12-18 months. We do our best to expedite the process by carefully drafting your application to avoid any objections by the CIPO. In the rare case that we receive an objection, we respond in a timely manner so that your application is delayed as little as possible. Back to top

How long does trademark registration last?

It’s valid for fifteen years with the opportunity to renew. Back to top

Why should I hire a trademark agent?

Registering a trademark is a complicated and time-consuming process. That’s why the Canadian Intellectual Property Office (CIPO) recommends hiring a registered agent. At the Trademark Group, our team of expert trademark lawyers and skilled agents will support you every step of the way. And if you’re planning to register your mark in other countries such as the US or the UK, CIPO strongly advises hiring an agent. So do we. It can make foreign registration a lot easier and less expensive in the long run, and we have an extensive network of agents throughout the world who have the same approach we do. The Trademark Group will:

  • Save you time—we’ll monitor all government correspondences, leaving you time to run your business while we ensure you provide timeless and correct responses to the CIPO office.
  • Save you money—weak applications will be rejected and you’ll have to re-pay all the fees when you re-apply. If you’ve already started using your trademark, you’ll have to create new branded supplies like stationary, websites and business cards. We’ll make sure your application is strong from the get-go.
  • Save you angst—weak trademarks leave you vulnerable to legal issues such as “cease and desist” letters and court action. Instead, we help you to do it once, and to do it right.

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How registering a trademark works

The process of registering your trademark can be complicated and time-consuming. We are here to help you every step of the way. Preliminary search You’ll complete a questionnaire so we can get to know you and your business. We’ll also talk to you (usually by phone) to help you think through some important questions, such as what distinguishes your trademark form others, and what are some of the potential strengths and weaknesses of your application. Then we’ll conduct what are called preliminary screens of the CIPO Trademark Registry to be sure no one else has already registered the same mark. We look for exact matches from the 8 million registered marks and business names. If yours matches an existing one too closely, we’ll advise you at this point to consider a new trademark. Searches and opinion After the preliminary search and after we’ve offered initial advice about your trademark, if you want further review and comfort, we’ll conduct a more extensive search—a comprehensive name search and report—that will include not just exact matches but also uses special algorithms to turn up similar-looking or similar-sounding marks. It’s important to check for similar marks because you need to ensure you don’t adopt and invest in a mark that appears to be “confusingly similar” to a pre-existing mark. Now, while it’s not a legal requirement, searching is one of the most important stages and something we strongly advise you to do or have us do for you. It ensures “due diligence and good faith” that you’re not infringing an existing trademark.  If you go ahead and use a mark that legally belongs to someone else, you could be sued for infringement or asked to pay damages. At the very least, you could be asked to stop using it—with the result that you lose all the value you’ve built up in customer awareness, not to mention things like stationery and supplies. Searching reduces the risk of wasting time and money by submitting an application that is doomed to failure. For those who may be launching a larger brand or series of related marks, we offer very detailed searches with opinions.  These are more expensive, but if you are investing heavily in your brand, it is sometimes better to be as sure as you can be. If, after conducting searches, we have found your mark to pose potential conflicts, we will work with you to create a stronger mark that leads to a stronger application. You will not be charged for additional searches as we work on fine-tuning your trademark. Application and registration Once we have determined that there are no apparent conflicts that could lead to your trademark application being rejected, we will begin the application process for you. It is a complex process and any small error can be fatal to your application. A complete trademark application includes:

  • A registration application
  • A graphic file of your logo (if needed)
  • A filing fee

If you want to register multiple trademarks (such as a logo and a name) you might be able to register them together, if that’s how you will always use them; but it is always advisable to protect each element, the logo and the word(s), separately. Filing date After the Trademarks Office receives your application, reviews it to ensure that it’s complete, and possibly contacts you for additional details or information, you will be assigned a filing date. If you want to change your application substantively after this point, you may have to fill out an entirely new application. Examiner’s report When your application is reviewed by CIPO, you may have to respond to objections to your application raised by an Examiner. We will ensure you are notified of any objections and can understand the report. Once your application has been filed, you need to stay engaged throughout the examination process—if you’re not on top of it (hint, we’ll help you!) your application could be considered “abandoned”. The examination process is a long one, with the following steps:

  • A search of existing trademark records to cross check against yours for similarities or conflicts.
  • An examination of your application to be sure you’ve complied with regulations. You or your agent may be informed of objections to your application, and you will have the opportunity to respond. We’ll help make sure your answers satisfy the assigned Examiner. If your application is refused at this stage, we can help you appeal to the Federal Court of Canada.
  • The Office will perform a second search to make sure that in the months while steps 1-3 were taking place, no trademarks were registered that conflict with yours. This is called a pre-publication search, as it takes place before your trademark is published in the Trademarks Journal online. You’ll be contacted if the Office turns up a conflicting mark.
  • Approval for Advertisement and Publication of your trademark in the Trademarks Journal, which lists all approved trademarks in Canada.

Opposition Once your trademark has been published, it can be opposed by anyone with valid reasons. A person who objects to your trademark must file a statement of opposition and pay a fee. They have to do this within two months of your trademark’s publication date. If you want to oppose someone else’s trademark, we can help support you through the process, which is complicated and much like legal court proceedings. Allowance and registration If your trademark has not been opposed, the Declaration and Registration Section will contact you to pay a registration fee. If your original application was based on “proposed use,” you will also at this time have to make a declaration to confirm that you have indeed begun using the trademark in Canada your business operations. If you have not been using it, you’ll have to request extra time so that you can begin to use it. After all these steps, the Office of the Registrar will issue you a certificate of registration and enter your trademark in the Register of Trademarks. Pop the cork, it’s time to celebrate your new trademark!Back to top

Trademark Infringement

Help! Someone has copied me! If you’ve registered a trademark, and someone has used your sign, symbol, logo or phrase—copied you!—you have legal rights. We can help you with dispute resolution and infringement issues. After you’ve decided that your trademark is being infringed, you have two choices:

  1. Do nothing; or
  2. Pursue legal action

Do nothing Many people choose to do nothing upon discovering that their trademark is being infringed. We advise against doing nothing, as you could potentially lose rights to your own trademark. Besides, legal action does not necessarily have to be ugly or time-consuming. Pursue legal action When legal action is necessary, we are here to advise you on the best ways of carrying out friendly negotiations. Sometimes these may involve a friendly phone call, email, or letter from you to the owner of another business to clarify matters of geography or service areas. Unfortunately, some infringers to not respond to friendly calls, but are more likely to respond to an official legal document. In this case, we can draft and send a cease and desist letter on your behalf.  We can also help if you decide you need to pursue further legal action in court. Back to top

What if someone would like to use my mark?

We’ll help you draft and negotiate licensing agreements with anyone wanting to use your mark so that you’re paid for the use of your intellectual property. Back to top

What do I do if someone is trying to register something similar to my trademark?

You or anyone else can look through the Trademarks Journal, a public document published by the government of Canada. You can use it to monitor new applications for registration.  We review it, too. If something rings alarm bells, we’ll help you draft and file a formal Statement of Opposition that includes all the grounds for opposing a potential registrant. We’ll make sure you lay out your case clearly and accurately. The registrant in question will then have to file a Counterstatement and both of you will be asked to submit evidence and other documents. Just as with trademark applications, the stages for opposition are long and may even drag on for years. And even after the Trademark Opposition Board makes its decision, you (or the other party) might choose to take the matter to the Federal Court. It’s best to enlist our help from the start to support you through the process. For the most part, we try to seek reasonable settlements without costing you a fortune.

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