How do I find out if my trademark is available?

A priority claim is made by listing the country, application number, and filing date of the first application for the same trademark for substantially the same products and/or services.

You can use your first application to claim priority rights in your trademark if you file international trademark applications within six months. A ‘priority claim’ allows you to retain your first rights in your trademark based on the filing date of your first application. For example, if you filed your first trademark application in Canada, but also want US protection, you can defer filing a US trademark application for up to six months and claim the advantage of the earlier filing date of your Canadian application.

Registered trademark rights are protected by the Trademarks Act and valid and enforceable Canada-wide. They give the trademark owner exclusive rights and anyone seeking to challenge the registration must carry the burden of proof. Unregistered trademark rights are governed by common law and limited to the specific geographical area (city, town, region) in which the trademark is used. To enforce unregistered rights, it’s up to the owner to prove that their trademark has gained significant goodwill and reputation in that geographical area overtime. It is very difficult and expensive to enforce a common law trademark, and most common law owners involved in a trademark dispute end up giving up their rights altogether simply because it is too expensive to go to court.

You can use the ® symbol beside your trademark only after it is registered. After successfully completing the application process, your trademark will be entered into the Register of Trademarks. The CIPO will send you a Certificate of Registration, which assigns your trademark’s official registration number and registration date. From that point onward, you can mark your trademark with the ® symbol (instead of the ™ symbol).

So long as your trademark search results are ‘clear’ (they indicate that your application is likely to succeed), we encourage you to launch your brand using the unregistered ™symbol.

Trademarks can be registered worldwide via the Madrid International Trademark System offered by the World Intellectual Property Organization (WIPO). There are over 100 countries that currently offer trademark protection under the Madrid System. You can select specific countries, or you can choose to protect your trademark in all applicable countries. For most of our clients, the Madrid System is far too expensive – it can cost tens of thousands in processing fees to register a trademark with the WIPO.

Before looking at international trademark protection, you should first apply to register your trademark in your home country. If you primarily offer your products and/or services in North America, you should file your application in the US and Canada. Registering in North America first will give you stronger grounds for registration in other countries.

Trademarks are more valuable than domain names. In fact, trademark ownership is required to truly own a domain name.

Wrong. Simply registering a domain name does not make it a trademark. The domain name is still subject to infringement under trademark law. Under law, domains are ‘borrowed.’ This means that if there were a domain dispute, the owner of the associated trademark rights will gain a transfer of the domain.

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 a ‘trademark’ is the unique ‘sign’ an individual or organization uses to distinguish their business in the marketplace and to identify their products and/or services.

No. Any individual, organization, business, trade union or association may apply to register their mark. If you initially file under your personal name and later wish to change the owner to be your corporation, a simple request made to the CIPO is all that is required.

In a nutshell, a trademark is a mark that allows you to have a unique identity in the marketplace, any special element such as a logo, name, slogan that you use to promote and distinguish your business from others.

Our comprehensive trademark search fee includes:

·        a comprehensive trademark clearance report from one of the eminent search houses in North America;

·        a phone meeting to discuss the likelihood of and strategies for your application’s success

Our comprehensive trademark search includes:

·        Active and inactive trademark records

·        All relevant classes of products and services

·        Common law conflicts

·        Web-based sources(e.g. Internet search, industry publications)

·        Domain names

·        Social media usernames and profile URLs

If a search report reveals a conflict with your proposed trademark, we will always offer a phone meeting to discuss the issue and suggest potential strategies for success.

We typically deliver our comprehensive trademark search results within 5 to 7 business days.

‘CIPO’ stands for the Canadian Intellectual Property Office. Trademark applications in Canada are filed, examined, registered, and renewed with the CIPO.

If you wish to stop the application process part way, you will still receive an expertly drafted application that you can then carry forward with your new trademark. We can also counsel you on choosing a trademark to avoid conflicts.

No. We take pride in protecting you and your investment, so your business can flourish. We simply can’t stand by marketing gimmicks that set you up to fail.

Here’s an example why: If you run a search for the proposed trademark ‘NIRKE’ using a competitor’s free online search tool, or even on the CIPO website, the results will show a false negative “0 Results.” Now, imagine you relied on this exact-match ‘pre-screen’ and launched a shoe/clothing brand under the name NIRKE. Big legal problems could ensue when Nike sends you a nasty letter! Suddenly, that ‘free search’ has cost you big money!

No. The biggest problem with relying exclusively on a CIPO Trademarks Database search is that the results include only direct or nearly direct matches of trademarks that have been filed or registered with the CIPO. Be careful. There could be someone else using the trademark who has the rights to it based on common law.

If you can only afford to register one component of your brand, we recommend protecting your name over protecting your logo design. Keep in mind that when more than one application is ordered at the same time (for example: Name + Logo) you get a discounted rate.

A brand identity consists of three components that can be registered with the government: brand name, logo and tagline. Each component requires a separate trademark application. Word-based applications should be preceded by a trademark search to ensure your brand elements are unique within your market and business sector.