Trademark FAQ's

1. What is a Trademark?
2. If I can have an unregistered Trademark, what's the advantages of registering it?
3. What is the difference between a Trademark and a patent?
4. I have a company name. Do I have Trademark protection?
5. I have a registered business name. Do I have Trademark protection?
6. How do I perform a Trademark search?
7. Are there different types of Trademark searches?
8. Are there any limitations to a Trademark search?
9. What is a Trademark registrability opinion?
10. How do I register a Trademark?
11. Are there any types of Trademarks which are not permitted?
12. What do Trademark Application Serivces Include?
13. If I register a Trademark, where is it valid?
14. How long is a Trademark valid?
15. What does the Trademark application process involve and how long does it take?

1. What is a Trademark?
A trademark is a word, phrase, design or logo which distinguishes a person's products or services from the products and services of another person. A trademark can be anything from your business name, a slogan which appears in your advertisements or a design or logo on your letterhead or other media. A trademark can be registered or unregistered.
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2. If I can have an unregistered Trademark, what's the advantages of registering
it?
Although you gain rights to an unregistered trademark, the rights are very limited. The owner of a registered trademark can prevent anyone else from using a trademark which is confusingly similar to his or her trademark anywhere in Canada. The owner of an unregistered trademark is not automatically entitled to this right.
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3. What is the difference between a Trademark and a patent?
A patent is granted in connection with an invention and prevents other people from using or developing the same invention. A trademark is a word or a symbol used to identify a product or a service.
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4. I have a company name. Do I have Trademark protection?
A corporate name does provide some degree of protection against others adopting similar corporate names. However, a provincial incorporation may only provide protection within that province. With respect to a federal corporation, you must establish that the use of another corporate name causes confusion with your corporate name. One of the factors the courts will consider in determining confusion is the area within Canada in which each business is carried on. Businesses may not carry on their operations throughout Canada. Therefore, a corporate name will not necessarily provide satisfactory protection throughout Canada. More importantly however, a corporate name is usually not used to identify products or services. Most Trademarks are unrelated to the corporate name of their owner.
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5. I have a registered business name. Do I have Trademark protection?
Firstly, business name registrations are only registered on a province by province basis. Secondly, there is no requirement for a person attempting to register a business name to provide proof that the proposed business name is not confusing with a previously registered business name. In order to sue someone who is using the same or similar business name, you have to establish that you are each using the business names in the same part or parts of Canada. Therefore, a business name does not give you protection across Canada. In addition, in order to prevent someone from using the same or similar business name you have to establish actual confusion whereas with a trademark the likelihood of confusion is sufficient. More importantly however, a business name is usually not used to identify products or services. Most trademarks are unrelated to the business name of their owner.
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6. How do I perform a Trademark search?
A trademark search can be performed on your behalf by a search house, a trademark agent or a lawyer. We are able to conduct a trademark search on your behalf. You can also perform a search yourself at the Canadian Intellectual Property Office's search room in Ottawa. The Canadian Intellectual Property Office also has an online database which you can search. However, the online database is not up-to-date and has only limited searching capabilities. Essentially, it only provides you with a direct hit search. It is usually recommended that you have a professional conduct the search on your behalf.
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7. Are there different types of Trademark searches?
Yes, there are various types of searches. Firstly, you can obtain a search of registered and pending trademarks only. However, this is usually not sufficient since a trademark application can be opposed by a person with an unregistered trademark. Therefore, in the vast majority of cases you should also search for unregistered trademarks.
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8. Are there any limitations to a Trademark search?
Since trademark searches are dependant on information submitted by government departments, they are limited by the length of time that it takes those departments to submit the information. While a full availability search is the most up-to-date, it is still limited to some extent. Further, data is retrieved using computer software. Therefore, the results of the search are dependant on the ability of the software to detect phonetically similar trademarks.
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9. What is a Trademark registrability opinion?
Once a trademark search has been conducted, the results must be analyzed to determine whether the proposed trademark is confusingly similar to any of the trademarks revealed in the search. This requires experience and a certain amount of knowledge. We can provide this opinion through qualified lawyers and trademark agents.
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10. How do I register a Trademark?
In order to register a trademark you must first submit a trademark application to the Canadian Intellectual Property Office containing the information required by it.
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11. Are there any types of Trademarks which are not permitted?
You will not be permitted to obtain a trademark for a mark which is merely descriptive of your products or services. For example, "computer desk" is not registrable since it is merely descriptive of your product. You cannot register a word that is primarily merely the name or the surname of an individual who is living or who has died within the preceding thirty years. You cannot register a trademark which is misleading or misdescriptive of the character or quality of your products or services or their place of origin. A mark which is confusing to a registered or pending trademark is also not registrable. Further, members of the public can oppose your trademark application if it is confusing with an unregistered trademark. Any mark which suggests a relationship with the government or is similar to government symbols such as a coat of arms or a flag is not registrable.
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12. What do Trademark Application Serivces Include?
We will prepare and file your trademark application and forward all correspondence from the Canadian Intellectual Property Office to you. We will also answer routine questions from the Canadian Intellectual Property Office on your behalf.
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13. If I register a Trademark, where is it valid?
A trademark registered in Canada only provides the owner with protection within Canada. Therefore, the owner of a registered Canadian trademark cannot prevent someone from using a similar trademark outside of Canada unless he or she has also registered the trademark in the relevant country.
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14. How long is a Trademark valid?
A trademark is initially valid for a period of fifteen (15) years from the date of registration. However, it can be renewed upon payment of a fee for an unlimited number of successive and consecutive fifteen (15) year periods.
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15. What does the Trademark application process involve and how long does it take?
Once the trademark application is filed you will receive a filing receipt from the Canadian Intellectual Property Office in approximately six weeks time advising you that your application has been received. Approximately one (1) year subsequent to the filing of your application, it will be examined by the Canadian Intellectual Property Office by an examiner. If the examiner has no objections to your trademark application, it will be advertised by the Canadian Intellectual Property Office in the Trademarks Journal. Members of the public will then have approximately two (2) months in which to oppose your application. If no oppositions are lodged, your application will be approved and will proceed to registration. The whole process can take between fourteen (14) and eighteen (18) months assuming there are no objections or oppositions.
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