Trademark Examination Stage


Those who have never filed a trademark application often think that filing the application is all that is necessary to get the trademark registered. In this cartoon, we explain what happens at the trademark examination stage, that is when a trademark examiner looks at the trademark application.





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TRANSCRIPT

NARRATOR: Ricky wants to protect his website blog DAD ALONE about how to be a single dad and still have a life.

NARRATOR: Ricky just watched the cartoon about trademark registration process in Canada. One thing he still does not understand is how the Trademarks Office decides if a trademark is approved or rejected.

RICKY: Hello, I watched your cartoon about trademark registration. I am still not clear about how it is determined if a trademark is approved or refused.

TRADEMARK FACTORY: After your application is filed it is assigned to an Examiner. When an Examiner reviews your application, he makes sure that your application complies with several sections of the Trademarks Act.

RICKY: Like what?

TRADEMARK FACTORY: For example, the Examiner makes sure that the minimum requirements for filing an application are met. Your application must specify the trademark itself, the trademark owner, products and services in association with which the trademark is to be registered and the dates when the applicant first used the trademark in association with each product and service. We have a separate cartoon about this.

RICKY: That’s it?

TRADEMARK FACTORY: If your application meets these minimal requirements, the Examiner will examine the mark itself to determine if it’s registrable.

RICKY: What are they looking at?

TRADEMARK FACTORY: The Examiner checks to make sure the trademark is not just somebody’s name or surname. If it is, such marks are not registrable. Please watch our cartoon about names and surnames.

RICKY: That’s interesting.

TRADEMARK FACTORY: Then the Examiner checks to make sure the mark is not descriptive or does not name the products. Descriptive marks are not registrable. Please watch our cartoon about the descriptiveness objection.

RICKY: Haha! Looks like you got a cartoon for everything!

TRADEMARK FACTORY: Well, that’s kind of the point!

RICKY: Sure, I’ll watch it!

TRADEMARK FACTORY: The Examiner also looks to make sure the applicant is not adopting prohibited marks, for example, national flags or certain words like UNITED NATIONS.

Scandalous or immoral marks are also not registrable, as well as somebody’s signature or portrait. Marks that have religious significance may not be registrable either. For more details, please watch our cartoons about prohibited marks.

RICKY: Oh my… That’s a lot to keep in mind!

TRADEMARK FACTORY: Last but not least, the Examiner will check if your trademark is confusing with another previously filed or registered mark.

RICKY: Do you have a cartoon for that?

TRADEMARK FACTORY: Well, what do YOU think?!

RICKY: I didn’t realize the examination process was so complicated!

TRADEMARK FACTORY: Filing an application is easy. Doing it in a way that will maximize the chances of registration requires a lot of specialized knowledge. It's much easier to do it right the first time than try to fix a poorly drafted application.

RICKY: I have some other trademarks I was thinking of registering, now I know where to go!


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Disclaimer: Please note that this cartoon is not and is not intended as legal advice. Your situation may be different from the facts assumed in this cartoon. Your watching this cartoon does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this cartoon as the only source of information to make important decisions about your intellectual property.

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