Trademark Registration Process in Canada
Believe it or not, it takes more than simply filing your application for your trademark to be registered. Find out about the phases that your application goes through in this short video.
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NARRATOR: Mike is an app developer. He just created a cool app for iphone. He decided to trademark its name.
MIKE: Doesn't seem too complicated, you just file an application, and it gets registered, right?
TRADEMARK FACTORY: Some people think that trademark registration is super simple. This is not so. This is like saying that writing apps is a matter of turning on your computer, typing a few lines of code, and you have a good app. Usually it takes much more than that.
MIKE: Hmmm. Tell me more!
TRADEMARK FACTORY: The first step is to search if your brand can actually be registered as a trademark. By the way, unlike most firms who charge several hundred dollars for it, we do it for free.
MIKE: Then what?
TRADEMARK FACTORY: Then we file the trademark application and pay the government fees, which becomes formalized, usually in 3 to 10 days.
MIKE: What does it mean?
TRADEMARK FACTORY: It means that it's properly entered into the trademark office's system and assigned a serial number.
TRADEMARK FACTORY: Then the long wait begins. In about 6 or 7 months, one of the two things is going to happen.
TRADEMARK FACTORY: In the ideal scenario, the trademark examiner is going to send an approval notice, which means that everything about the application is great. This happens in about 25% of the cases.
TRADEMARK FACTORY: In 75% of the cases, the trademark examiner issues an office action (also called an examiner's report). Office action means there is something about the application that the trademark examiner does not like. You have several attempts to either amend the application until the examiner is happy, or to convince the examiner that the application should be approved as is. Each iteration usually takes about 5 to 10 months.
TRADEMARK FACTORY If, despite all attempts and arguments, the trademark examiner remains unpersuaded that the trademark is registrable, it will be refused. Otherwise it will be approved.
MIKE: So, 3 out of 4 applications receive an office action?
TRADEMARK FACTORY: Yes, and many of them can't jump over that hurdle because the applicant does not know how to respond to these office actions.
MILE: OK. Then what?
TRADEMARK FACTORY: After the mark is approved, it will be advertized in the Trademarks Journal. This is a special publication where the Trademark Office publishes all new trademarks that are about to be registered.
TRADEMARK FACTORY: The purpose of publishing the trademark is to allow anyone to request that the trademark office not register the mark. This is called opposition proceedings.
TRADEMARK FACTORY: The good news is that opposition proceedings are extremely rare. The bad news is that if your mark is opposed, the whole process may take several years and unexpectedly cost a lot of money.
TRADEMARK FACTORY: If the application is not opposed or if you win the opposition, then the mark gets allowed. Otherwise, it will be refused.
MIKE: Wasn't it allowed already?
TRADEMARK FACTORY: No, it was APPROVED first. Now it gets ALLOWED. I know it sounds similar, but these are two completely different stages in the process.
MIKE: I see. Is that it?
TRADEMARK FACTORY: Not yet. The final step is going from allowed to registered. If in your trademark application you stated that the trademark was in use in Canada, then all you need to do is pay post-allowance government fees. If you were only planning to start using the mark in Canada, then in addition to paying the government fees you must make a declaration to the Trademark Office that you already started using the mark in Canada. Once you file that declaration and pay the fees, the trademark becomes registered.
MIKE: Wow, I didn't realize you go through so many steps. So how long does this usually take?
TRADEMARK FACTORY: Typically, the whole process takes about 18 months. It can be a little less than that, or it can be more than that, but 18 months gives you a pretty good idea of the process.
TRADEMARK FACTORY: And one more thing, don't forget that trademark registration is good for 15 years in Canada, so in 15 years you would need to renew the registration.
MIKE: Thank you
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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