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How to Monitor Your Trademark Application (Canada)

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We will get the ball rolling with your application by:

  • Running a Canadian trademark search report to avoid potential conflicts
  • Setting up your account with the Canadian Intellectual Property Office (CIPO)
  • Filling in your applicant and trademark information for you
  • Attaching an accurate digital design file, if you are applying for a logo
  • Properly describing and classifying your goods and services
  • Finalizing your draft application, so it’s ready for you to file

Trademark search report

We’ll begin by running a search report on existing Canadian trademark applications or registrations to locate any similar trademarks that could potentially conflict with yours. CIPO may object to your application if someone else already filed or registered a similar trademark for use in a similar area. If you would like reassurance on the likelihood of success before filing your application, give us a call. We provide comprehensive trademark search and opinions on a flat-fee basis.

Setting up a CIPO account

We’ll create a CIPO account for you with your own user name and password, so you can securely access CIPO’s online e-filing services and monitor your application.

Filling in applicant and trademark information

We’ll enter the applicant information, including your name or the name of your business, legal entity status, mailing address, and contact information, and enter your trademark, along with any representation or description required.

Attaching a digital design file

Is there an image or design element to your trademark (i.e. a logo)? Then you’ll need to provide a digital version of the design prior to your phone call with us. It’s pretty simple: just create a black-and-white digital image file (such as a JPEG or TIFF) of the design mark and submit it with the intake form at the time of checkout. We’ll include the digital design file in your application.

Describing and classifying your goods and services

We’ll describe the products (goods) and the activities you offer (services) in association with your trademark using acceptable language that meets CIPO’s technical requirements. We’ll also decide which class(es) your goods and services fall into. Goods and services in a trademark application are categorized into 45 different classes, using an international classification system known as the Nice Classification. The application filing fee is determined by the number of classes of goods and services included in your application. The more classes, the higher the filing fee.

Finalizing your draft application

We’ll ensure that your draft application is accurate, complete, and ready for you to file online through your personal CIPO account. We will walk you through it over the phone.

Here are a few more things you should know before you file:

  1. Each individual trademark you want to register requires a separate application.
  2. After CIPO receives your application, some changes are allowed, but if you expand your list of goods and services, or modify your trademark in any way, you will have to file a new application.
  3. During the approval process, you will receive correspondence from CIPO that may require a response from you by a set date. Be sure to keep track of all deadlines. If you don’t respond in time to any actions with deadlines, your application will be considered abandoned and you will have to file a new application and pay another fee.
  4. After your application is formalized, it will appear in the Canadian Trademarks Database, available online on the CIPO website. You can check on the status of your application by doing a database search on your trademark or application number and viewing the ‘Action History.’
  1. It’s a good idea to keep a record of all documents related to your trademark application. This can include keeping copies of your trademark application (and any revised applications), filing and payment receipts, notices, and any correspondence received from or sent to CIPO. Some documents, such as your trademark application(s) and filing and payment receipts, can also be viewed and retrieved under ‘Transaction History’ in your CIPO account.
  2. Don’t forget to inform CIPO, in writing, if you have a change of address. CIPO is not responsible if you don’t receive correspondence. You can update your address by mailing or faxing in a letter.
  3. Finally, be on the alert for scam mail or email about your trademark application. The CIPO Trademarks Database is a public record—this means that anyone (including fraudsters) can access information about your application. Scam notices are crafted to look like official notices and usually ask for hefty payments. You should only receive notices about your application from CIPO. If you are unsure if a notice you received is legitimate, contact us.

Breaking Down the Approval Process

Okay, now that you’ve filed your trademark application, you’ll have to monitor its progress. Here’s what’s involved:

Upon receiving your trademark application CIPO will:

  • Assign an application number and a filing date
  • Search the trademarks database for any conflicts
  • Examine your application to ensure it complies with applicable rules and laws
  • Approve your application for advertisement
  • Conduct a pre-publication search
  • Advertise your application for opposition purposes
  • Address any potential opposition
  • Register your trademark

Assign an application number and filing date

Upon successfully e-filing your trademark application, CIPO will generate an application number, which will appear at the top of your application confirmation copy. The application number identifies your application (be sure to include it on all future correspondence). CIPO formally acknowledges receipt of your application by sending you an email attaching a Filing Notice and a proof sheet summarizing the complete application details. The Filing Notice lists the official filing date. Once CIPO confirms that the basic filing requirements are met, your application will be entered into the Canadian Trademarks Database. By the way, just in case there is a similar trademark pending, the filing date is helpful in determining who is entitled to register.

Search trademark database

Over the course of the next few months, CIPO will search the Canadian Trademarks Database for any existing pending or registered trademarks that could be considered confusing with your trademark. To avoid surprises, ask us about how to order a search report and opinion prior to filing.

Examine your application

Your application will eventually be assigned to an examiner who will review the database search results and assess your application to ensure it complies with all statutory requirements. If any problems are identified, the examiner will send you an Examiner’s Report outlining the issues and giving you an opportunity to respond by a set deadline (you must respond to avoid abandonment). Examiner’s Reports are issued for both simple (formal) and complex (substantive) reasons A simple issue might be a requirement to clarify the nature of your goods or services. A complex issue might be an objection based on confusion with an prior-registered trademark. Issues raised in an Examiner’s Report are resolved by filing a revised application (making amendments where needed) or, in the case of a substantive objection, by submitting arguments challenging the Examiner’s position. Effectively responding to an Examiner’s Report can require an in-depth understanding of Canadian trademark laws and procedures. If you receive an Examiner’s Report and feel lost, please contact us. Our trademark experts can assist you with filing a response on a flat-fee basis.

Approve your application

The examiner will send you an Approval Notice if the application is satisfactory as filed or after any issues raised in an Examiner’s Report are resolved. The Approval Notice states that the application will be publicly advertised in the Canadian Trademarks Journal. It also summarizes the final application details, giving you an important opportunity to review the details for accuracy before they are published. If you find a typo or discrepancy, now’s the time to contact CIPO to correct it.

Pre-publication search

To ensure there are no potential conflicts between your trademark and any recently-registered or newly-filed trademarks, CIPO will conduct a pre-publication search. Again, if any issues are found, the examiner will connect with you and ask for a response. Give us a shout if you need to discuss your best response.

Advertise your application

If no conflicts are found in the pre-publication search, your application will be advertised in the Canadian Trademarks Journal, a weekly publication, available online, that lists recently approved trademarks. The advertisement page shows the complete details of your application, including the name and address of the applicant, the application number, the filing date, the trademark, the associated goods and services and their classes, and any claims. The purpose of the advertisement is to give other parties an opportunity to make an objection (with valid reasons) prior to the registration of your trademark. If a party wishes to oppose your application, they must file a Statement of Opposition or ask for extra time to oppose within two months of your trademark’s advertisement date. They must send in a fee by that time as well.

Address any potential opposition

So what happens if someone files a Statement of Opposition? If your application is opposed, you might need an agent. Give us a call—we’re here for you. An opposition is similar to a court proceeding, but it is instead held before the Trademarks Opposition Board (TMOB). Although most oppositions are resolved through negotiations in the early stages, it can get complicated (and costly) if the parties are unwilling to settle. The opposition process follows strict deadlines and involves filing evidence and arguments, and conducting cross-examinations. If an opposition ruling goes against you, an appeal can be made to the Federal Court of Canada.

Register your application

If no one opposed your application during the advertisement period (or if any opposition was successfully resolved), your trademark will be entered into the Register of Trademarks. CIPO will send you a Certificate of Registration, which lists your trademark’s official registration number and registration date, and a second document summarizing the complete registration details. Your registration grants you the exclusive right, Canada-wide, to use your trademark in association with the registered goods and services for a ten-year (renewable) term.

Post-Registration Information

Here are some important things you need to know about maintaining, enforcing, and properly using your registered trademark:

Renewal

You must pay a renewal fee every ten years to maintain your trademark registration. The renewal fee is determined by the number of classes of goods and services your registration covers. CIPO will send you a renewal reminder notice around six months before the renewal deadline, but it’s a good idea to write the renewal deadline (and a reminder or two) into your personal calendar. Also be sure to keep your contact information updated with CIPO, so that you don’t miss out on any important notices. If the renewal fee isn’t paid in time, your registration will be expunged (cancelled).

Use your trademark exactly as registered

A trademark registration grants you protection in your trademark exactly as it is registered. So, to maintain rights in your trademark, make sure you use your trademark in the exact same way that it appears on the Certificate of Registration.

Keep using your trademark

It is important that you actively use your trademark in association with with all of your registered goods and services. If you stop using your trademark after it has been registered for at least three years, your registration could be at risk for cancellation, if some files a request with CIPO.

Use the ® symbol

Marking your trademark with the ® federal registration symbol gives notice to others that you are the legal owner of your trademark and have the exclusive right to use it. Proper marking can also help you to recover damages in a trademark infringement action. It is not necessary to use the ® symbol beside the trademark in every occurrence, but you should mark your trademark at least once on each page or section, or wherever the trademark is most prominently displayed on your website, advertisement or packaging.

Effective trademark use – a few more tips:

Always use your trademark as an adjective followed by a noun that describes your good or service. Never use your trademark as a noun or a verb.

Correct use

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Incorrect use

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If your trademark is a word, always distinguish it from other text by displaying it in a different font, style, or colour. By displaying your trademark differently, it emphasizes that the term is a trademark and not just any other word.

Be consistent in how you use your trademark (display it the same way each time). This will help the public recognize and distinguish your trademark as your unique brand.

Police your trademark

As a registered trademark owner, you have the exclusive right to use your trademark in association with your registered goods and services Canada-wide. However, it is up to you to police your trademark; CIPO does not do this on your behalf. Policing your trademark involves monitoring ‘marketplace’ activity. This can be done by periodically doing Internet searches on your trademark looking for copycats or infringers, keeping an eye on your competitors’ initiatives, reviewing CIPO’s weekly Canadian Trademarks Journal to ensure that no trademarks, similar to yours, have recently been approved (you can file an opposition if you catch it in time), or even hiring a formal trademark watch service. If you discover that someone is using your trademark without your permission, you can take action against them. We can help you with infringement issues and dispute resolution.

Get agreements in writing

Your trademark is a form of property—intellectual property—and it can be a valuable asset. If you wish to sell/transfer (assign) your trademark or give someone else the permission to use (license) your trademark, make sure you have a formal legal agreement in place to safeguard your interests and your brand integrity. We have expertise in drafting and negotiating trademark agreements of all kinds—give us a call if you need assistance.

Inform CIPO of changes

Remember to inform CIPO, in writing, of any changes that affect your trademark registration. For example, if you (or your business) have a change in name or address, you can request that CIPO update your trademark record by mailing or faxing CIPO a request. This will help to ensure that any notices sent about your trademark registration will reach you.