Is my trademark registration a guaranteed success?
There is always a degree of uncertainty in trademark registration. Often, national trademark office databases do not include the most recently filed trademarks as they are only updated so often. As a result, the trademark in question may already exist as a file in progress. In addition, some countries such as the United States adopt the common law in trademark registration. There may be cases where a trademark is not registered, but already been in use. In these cases, the first party to use the trademark will have trademark rights. These reasons may lead to failure of the trademark application. However, we share the risk with our customers, and are the only company to offer a guaranteed, 50% refund service level.
How long does the registration process take?
Under normal circumstances, the trademark office will issue an acknowledgment of the trademark filing within a month. Our express service can guarantee protection of your mark by expediting the application to get a filing number within 3 business days. After that, the final trademark registration certificate will usually be issued in 8-24 months, depending on the country of registration and the complication of the case.
Who can apply for trademarks?
Any individual or company can apply for trademarks in the US, Canada, or EU, regardless of their country of origin or operation.
What is Trademark Statement of Use?
In many countries such as the US and Canada, there are two scenarios when applying for a trademark: Either the trademark is already in use in the designated country; or it has never been used. The US and Canada Trademark Offices only issue the registration certificate after the trademark applicant had provided a Statement of Use. In the case that the trademark has not yet been used, the application may be filed with the bona fide intention to use the trademark to offer goods and/or services in the designated country. However, the statement of use will still need to be submitted before the registration certificate can be issued.
Can trademarks be registered internationally? What is the Madrid International Trademark System?
Currently the only way to register a trademark internationally is through the Madrid System (officially the Madrid System for the International Registration of Marks). This system facilitates the registration of trademarks in multiple jurisdictions around the world. The Madrid System currently includes the world's 92 major trading nations, and the operation of the entire system is managed by the World Intellectual Property Organization (WIPO). Although the Madrid System is convenient for centralized management of multiple trademark countries, it is very costly. After submitting an application to the WIPO, the customer needs to submit applications and fees to each country separately. Furthermore, should there be any problems with one country in your Madrid application, the entire application for all countries will fail, which can be costly. Finally, the applicant also needs to apply individually in each country before using the Madrid System to administer those applications centrally, so the risk is substantial and is not recommended for small to medium enterprises looking to expand. For small to medium enterprises, we strongly suggest applicants apply for trademarks in the US, EU and other major markets separately. This means you save time and money for trademark protection.
Can we change the font of the letters after the “design mark” is registered?
Usually, it is acceptable if the change of the font is insignificant (such as changes from italic to standard, Arial to Calibri). If the changes are significant, we suggest that customers reapply.
My trademark contains both images and words. Should I register them separately, or together?
Our recommendation is to register the word and logo trademark separately. This creates flexibility on the usage of the trademark as well as reduces the overall risk of denial.
What is Nice Classification? What are the classes in the Nice Classification?
The Nice Classification is a system of classifying goods and services for the purpose of registering trademarks. It is updated every five years and its latest version (11th) of the system groups products into 45 classes (classes 1-34 include goods and classes 35-45 include services), and allows users seeking to trademark a good or service to choose from these classes. Since the system is recognized in numerous countries, this makes applying for trademarks internationally a more streamlined process
What is the period of validity of a China registered trademark?
The period of validity of a registered trademark is ten years, counting from the date of registration approval. If you want to continue to use the registered trademark beyond this, an application for renewal of the registration must be made.
Should I register my trademark in the US if I am using it as a common law trademark?
Common law rights are limited only to the geographic area in which they are used and possibly to some areas of reasonable expansion. If you ever plan to conduct business outside of your geographic location (local jurisdiction) a Federal registration is required. Federal registration- that is trademarks registered with the USPTO- are given geographic protection across the entire USA. In addition, Federally registered trademarks are granted a higher degree of protection in Federal Courts than their common law counterparts.
What are the USPTO fees for Trademark Applications?
The United States Patent & Trademark Office has three options for filing applications through the Trademark Electronic Application System (TEAS) — TEAS Plus, TEAS Reduced Fee (TEAS RF) and TEAS Regular. The initial Application Fee for Electronic Filing is as follows:
Option 1 (TEAS Plus) : $225
Option 2 (TEAS Reduced Fee): $275
Option 3 (TEAS Regular): $400
Refer to the USPTO link below if you want see a more detailed breakdown.
Note: Almost all trademark fees for any part of the process are calculated on a "per class basis" for all listed goods and/or services, which will make overall fees higher if goods/services fall in more than one class. Also, fees presented here are based on electronic filing (paper filings are permitted, but have much higher fees).
How long does it take to get a Canadian trademark?
In Canada, the whole process from start to finish, from filing your application to getting your trademark registered, usually takes about 18 months on average.
Should I trademark my brand name?
A brand name is a company's identity and valuable asset which carries the ability to influence consumer purchase decisions. Lots of resources and investments are made to build up brand names. By trademarking your brand name has the following benefits:
1. Protecting the brand name, logo nationwide with an exclusive right to use the mark.
2. Deterring other parties from infringing your mark, depreciating the value of the goodwill invested in the brand.
3. Providing the owner with greater remedies, giving him or her an automatic right to sue in federal court and recover from the damage caused by an infringement.
How do I know if a trademark is registered?
Since trademark registration is jurisdictional, it is in the applicant's best interest to search the country's trademark database before applying. For example, you can go to the Trademark Electronic Search System for US trademarks, and the Canadian Trademarks Database for Canada trademarks. If you are interested in trademarks in other parts of the world, TMview would be your best friend in conducting a global trademark search.
Can someone register a trademark without a business?
Yes, you can register a trademark as an individual. In fact, anyone can apply for a trademark as long as he or she owns the mark. A person can claim ownership when he or she is the one who controls the nature and quality of the goods or services under the trademark.
Do I need to file a trademark for my business name?
Whether you should register a trademark for your business name depends on the geographic scope of your business, the type of name you have and whether you have the time and money to file a trademark application.
What are some ways to avoid potential diffculties when filing a trademark or service mark?
To help avoid potential difficulties to your trademark application being registered you should do the following:
Develop a fanciful, suggestive, and strong trademark that avoids a generic words and terms;
Avoid vulgar phrases no matter how popular they are in your everyday life;
Consider trademarking your Internet domain and your slogan or tag line;
Take time to conduct a thorough,comprehensive trademark search that includes unregistered trademarks or common law marks. This includes, searches for phonetically similar words, synonyms, homonyms, and foreign words with similar meanings; and
Answer all Trademark Office Actions. If you do not answer them then your trademark application will be abandoned.
What are the phases of the trademark application process in Canada?
Your Canadian trademark application will undergo several phases at the Canadian Intellectual Property Office (CIPO) including; Advertising, Examination, Formalities, Opposition, and Allowance/Registration.
Formalities: After your trademark application is filed with CIPO it will be assigned a filing date and application number, provided that the application is complete. CIPO will also add your application to the Canadian Trademarks Database and issue you a formal filing acknowledgement and a proof sheet that summarizes the information in your application.
Examination: Examiners will review your compliance with all application requirements. Your mark will be inspected based on its clarity, descriptiveness, distinctiveness, deceptiveness, potential conflicts with earlier applications and any other criteria that may apply. If there are any issues with your application, the examiner will issue an Examiner’s Report. You will have a chance to respond to the examiner, and if the objections raised in the report are not overcome, your trademark application will be rejected.
Advertising: If the examiner's objections are overcome, or there are no objections, your trademark application will be approved for advertisement in the Trademarks Journal, a weekly publication by CIPO that lists trademark applications seeking registration. Publishing your application in the Trademarks Journal allows members of the public an opportunity to oppose your proposed trademark during what is called the "Opposition Period.”
Opposition: During the Opposition Period third-parties may oppose your trademark application based on breach of copy, propriety rights, descriptive mark, bad faith, etc. This Opposition Period lasts for two months from the date of advertisement.
Allowance/Registration: If your trademark application is not opposed, CIPO will issue a Notice of Allowance, inviting you to pay the Registration Fee. It is not required in Canada to provide proof of use; however, if the application is Proposed Use, you have to submit a Declaration of Use. Once the Registration Fee and Declaration of Use (if applicable) have been submitted and accepted by CIPO, your trademark will be registered. CIPO will then issue an official Certificate of Registration.
Does Canada use the
In Canada, the use of the Nice classification system is currently voluntary. Keep in mind, however, that categorizing goods and services according to the Nice Classification will become mandatory next year when the legislative changes to the Trademarks Act come into force on June 17, 2019.
Is there an international trademark I can buy to be protected in more countries than one at a time?
No there is no International Trademark you can buy, but you can use the Madrid International Trademark System to register your Trademark worldwide. The Madrid System is a convenient and cost-effective solution for registering and managing Trademarks worldwide. File a single application and pay one set of fees to apply for protection in up to 117 countries. You can modify, renew or expand your global Trademark portfolio through one centralized system.
Who can use the Madrid System?
You can use the Madrid System if you have a personal or business connection to one of the System’s members. This means you must either: be a resident, have an industrial or commercial establishment in, or be a citizen of one of the 117 countries covered by the Madrid System's 101 members.
How much does it cost?
The cost of an international Trademark registration includes the basic fee, plus additional costs depending on where you want to protect your mark, and how many classes of goods and services will be covered by your registration. After obtaining an International Trademark registration, additional fees apply to expand the geographical scope of coverage, modify or renew your Trademark portfolio. Here is a list of fees for each country under the Madrid System.
How to register a trademark in the U.S. for non-residents?
You are not required to be a U.S. citizen to apply for and obtain a U.S. Trademark registration. You have 3 options to file a U.S. Trademark applications:
You may file a new Trademark application on your own. Foreign applicants can file a Trademark directly online through the USPTO (US Trademark and Patent Office). You do not need a local agent or representative;
2. If you have filed for Trademark or have a registered Trademark in a foreign jurisdiction you can file in the U.S. based on these foreign filings or foreign registrations; and
3. Utilize the Madrid System - The Madrid System is a one-stop solution for registering and managing Trademarks worldwide. Under the Madrid Agreement, Trademark applicants can submit one application to protect their work within a coalition of countries. The Madrid Union is made up of countries that recognize these international Trademarks.
What are the
When filing a trademark application in Canada, a “Filing Basis” must be selected. You can select from three possible options:
1. “Use in Commerce” basis: If you are currently using your trademark in Canada, we can file your application on a “Use in Commerce” basis. In this case, you will need to provide the date of first use in Canadian commerce for each of the products and/or services included in the application. The date of first use must be before the filing date.
2. “Proposed Use” basis: If you are not using your trademark in Canada, we can still file your application on a “Proposed Use” basis. In this case, your application will be processed normally, but once it is accepted for registration (approximately 12 months after the filing date), you must provide the date of first use in commerce in Canada for each of the products and/or services included in the application, when paying the registration fees.
3. “Foreign Registration” basis: If your trademark has been filed or registered in your country of origin, we can file your application in Canada on the basis of the “Foreign Registration” if the following conditions apply:
Your trademark is not similar and cannot be confused with another trademark already registered in Canada
It is not a prohibited trademark or contrary to morality or public order
It is not without distinctive character having regard to the circumstances including its use in any country. Additional fees have to be paid for the filing of foreign certificates.
What are the steps to obtain a trademark in Canada?
Trademark registration in Canada usually involves the following steps:
Filing of your application
Examination of your application
Publishing of your application in the Trademarks Journal
A waiting period to allow people to oppose your application
Allowance of your application
Registration of your trademark
What types of trademarks can and cannot be registered in Canada?
You may register anything that does not disobey the Trademarks Act such as words, devices, names, three-dimensional shapes, sounds, slogans, motion, and holograms. You cannot, however, register the following types of marks:
Names and surnames;
Clearly descriptive marks;
Deceptively undescriptive marks;
Words that represent a geographical location commonly known to be the place of origin of such goods or services;
Words in other languages;
Words or designs that could be confused with a registered trademark or pending trademark; and
Words or designs that look very similar to a prohibited mark
How long does it take for me to get a Canadian registration once I file my trademark application?
The entire Canadian trademark application process, from filing to registration, generally takes 12 to 18 months if there are no objections from a CIPO examiner or third-party oppositions to the application.
How long will it take for a Canadian trademark examiner to review my trademark application?
We find it can take anywhere from 10 to 12 months before an application is reviewed by an examiner at the Canadian Intellectual Property Office.
Is it possible to register a trademark outside of Canada?
Registering your trademark with the Registrar protects your rights in Canada only. If you wish to sell goods or services in other countries, you should think about getting trademark registration(s) there as well. For more information, contact a Witmart Trademark Consultant.
Can I register my trademark in individual Canadian provinces?
You cannot register a trademark in individual provinces in Canada. All trademark registrations are granted nationally by the Canadian Intellectual Property Office (CIPO). Registration of a trademark in Canada gives you nation-wide protection of your mark no matter where you live in Canada.
Who can file for the registration of a Canadian trademark?
Companies, individuals, partners, trade unions or lawful associations can apply for the registration of a trademark in Canada provided that they comply with the requirements of the Trademarks Act and Trademark Regulations.
Is there a way to claim priority filing in Canada?
Yes, if the home country of the applicant is a World Trade Organization member and/or a Paris Convention member, that applicant can file under their home filing date to earn priority consideration.
Will there be problems if I do not use my Canadian trademark after registration?
Yes, if you do not use your Canadian trademark after registration, your business competitors can attack your trademark on the basis of non-use. Non-use is valid grounds for cancellation.
Is it legal to use my trademark even if it is not yet registered in Canada?
Yes, it is legal to use an unregistered trademark for goods and services. You can use the ™ mark for any non-registered trademark. That said, you are not able to use the ® mark until you have officially registered your mark in Canada.
Does having a registered trademark in Canada give me any rights?
Registering your trademark in Canada proves validity and ownership, making it harder for your competitors to challenge your mark. That said, under the “First to Use” jurisdiction, registration is not required to obtain rights to a trademark as long as you can prove that you are the first to use the mark.
Can I file for a word and a design together on the same trademark application in Canada?
If you plan to always use a combination of word(s) and design together in association with your goods and services, you can file one application showing the trademark as the combination of word(s) and design in black and white.
If you plan to use the word(s) separately from the design, however, you may wish to file two separate trademark applications — one for the word(s) and one for the design.
What is the official Trademark Office for Canada?
The Canadian Intellectual Property Office (CIPO) is a part of Innovation, Science and Economic Development Canada. CIPO is a Special Operating Agency and is responsible for the administration and processing of the greater part of intellectual property (IP) in Canada. CIPO's areas of activity include trademarks, patents, copyright, industrial designs and integrated circuit topographies.
What is the difference between a registered and an unregistered trademark?
When you register your trademark, you get the sole right to use the mark across Canada for 15 years. Under the amended Trademarks Act, however, new marks filed for registration after June 19, 2019, will be protected for ten years. You can renew your trademark every ten years after that.
Technically, a registered trademark is one that has been entered in the Register of Trademarks, as managed by the Registrar. Registration is direct evidence that you own the trademark. In Canada, should a trademark dispute occur, the registered owner does not have to prove they own the trademark — that duty falls to the challenger.
Trademark registration is not required for ownership. By using a trademark for a certain length of time, you can come to own it according to common law. If you use an unregistered trademark and end up in a dispute, however, you could be looking at a long, expensive legal battle over who has the right to use said mark. Even if you do register your trademark, if you fail to use the mark over a long period of time, you may be taken off the Register of Trademarks, making it more difficult to prove legal trademark ownership.
What is the Trademark renewal fee after the ten years?
Between the 5th and 6th year of registration, you must file a Section 8 declaration. A Section 8 declaration is a signed statement filed by the Trademark owner. The fees for these types of renewals are as follows:
The fee for filing a Section 8 declaration is $125 per class of goods or services in the registration.
The USPTO will still accept Section 8 declarations for up to six months after the due date during a period called the grace period. Affidavits or declarations during the grace period must include an additional $100 fee per class of goods or services.
Between the 9th and 10th year after registration, you must file a combined declaration of use and/or excusable nonuse and application for renewal under Sections 8 and 9 (combined filing). A Section 9 renewal application is a written request to keep your registration active. The fees for these types of filings are as follows:
For a combined filing of Section 8 and 9 renewal is $425 per class of goods or services in the registration.
A combined Section 8 declaration and Section 9 application for renewal must be filed every ten years calculated from the date of registration. Failure to file required maintenance documents will result in the registration being cancelled or expired. The deadline to file maintenance documents is established by law and cannot be waived or extended. If your registration is cancelled, your only recourse is to file a new application with a new application filing fee.
Can you transfer a registered Canadian trademark to someone else?
A trademark is a form of property. You can sell, bequeath or transfer your rights to someone else through an assignment. To avoid ownership disagreements, you should formally tell the CIPO Registrar about changes in ownership.
Can I file a Canadian trademark application if I live outside Canada?
Yes, if you apply to register a trademark in Canada but are living outside the country, you must appoint someone (a “representative for service”) in Canada to whom the Registrar can send correspondence.
Your representative for service cannot act on your behalf for any business with our office — only your trademark agent can do that. Your representative for service’s only role is to receive correspondence from our office.
When should I register my trademark in Canada?
It is best to file your application as soon as you affiliate your brand or identity with your unique “Trademark”— the word, logo, phrase or other unique element or combination thereof that you wish to register. As you begin the registration process, you might discover that someone is already using a similar or identical mark. It’s better to find out about potential conflicts early rather than several years after establishing your brand identity around a mark already in use elsewhere.
What should I do if someone else is trying to register something similar to my trademark in Canada?
You or anyone else can look through the Trademarks Journal, a public document published by the government of Canada, to monitor new registration applications. If a potential trademark from another applicant raises concern, you should hire a Trademark Agent or Lawyer and file a formal Statement of Opposition that includes all the grounds for opposing a potential applicant.
How do I use the TM, SM and ® symbols?
Anyone who claims rights in a mark may use the TM (Trademark) or SM (Service mark) designation to alert the public to their claim of ownership, regardless of whether they have filed an application with the Canadian Intellectual Property Office (CIPO). This claim may not be valid, but merely shows evidence that the owner believes that the mark is protectable. Use of the federal registration symbol (®) can only be used when the mark has been registered officially with CIPO. It is improper to use the ® at any time before CIPO grants registration.
Can you trademark names and surnames in Canada?
A trademark cannot be registered in Canada if it is nothing more than a name or surname (for example, John Doe or Jane Smith, Wong, Cohen, etc.).
There are exceptions to this rule. For example, if you can prove that your goods or services have become publicly well known under a particular name or surname and that the word has developed a second meaning associated with your brand in the public mind, you may still be able to register your mark. Another exception might include a name or surname that has a separate meaning outside the name or surname itself; that is, the name is also the word or name of a community, city, town, river, castle, etc. In that case, you could register your last name to as a business trademark — as long as there were no other reasons you prohibiting that usage.
What is an Opposition?
Any person with a reasonable argument for doing so can oppose a trademark application advertised in the Trademarks Journal. The person must make the opposition within two months of the publication date by either filing a statement of opposition or asking for more time to oppose. The proper fee must be sent with the statement of opposition or request for more time. The Registrar will not allow any opposition that may be considered frivolous.
If your application is opposed and you do not already have an agent, it is best to hire one at this point. The same is true if you wish to oppose someone else's application. Opposition is a complex and often long process. Opposition proceedings are adversarial in nature and similar to court proceedings. Both parties may file evidence and counter-arguments, cross-examine the evidence of the other party, and appear at an oral hearing. After a final decision is made, it may be appealed to the Federal Court of Canada.
Can I use an English trademark in Quebec?
The Quebec Charter of the French Language contains provisions that are intended to protect the French language within Quebec. The regulations under the Charter provide a specific exemption for “a recognized Trademark" within the meaning of the Trademarks Act unless a French version has been registered. “Thus, a Trademark registered with CIPO is exempt from the Charter. It is not clear whether an unregistered trademark would also be covered. Your safest course of action is to register the trademark if you intend to use it in English in Quebec.
How do I avoid adopting a trademark that may be easily confused with another trademark?
The best way to avoid conflicts with trademarks filed earlier than yours is to have a trademark search done. An experienced trademark professional like the experts at Witmart can offer preliminary advice before the search is conducted — protecting you from potential risks before they turn into conflicts.
Is it possible to cancel a registration in the U.S.?
A petition to cancel a registered Trademark is possible if these violations are present:
The owner filed the application in bad faith;
The mark is proven to be immoral or in conflict with public policy;
The mark is deceiving the consumers;
The mark is describing the characteristics of the good/service;
The mark is generic and/or functional; and
The mark is not capable of making the good/service distinct
Do I have to be selling the products associated with my trademark to file an application?
No. An applicant can file on an intend to use basis.
Can I use a registered trademark as part of my trademark?
No. This would lead to a likelihood of confusion between your mark and the registered mark.
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