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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.

What is the cost to conduct a comprehensive search for my trademark?

Witmart is the only company that offers a comprehensive search done by a professional trademark consultant free of charge.

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 a TM?

TM is the short form for TRADEMARK, regardless of whether a trademark has been registered with any Intellectual Property office for registration; anyone can put TM to declare the trademark rights, but only registered owners can assert their rights in courts. Generally, in the upper right or lower right corner of the trademark.

What is ®?

® is the short form for REGISTERED, meaning it has been registered with an Intellectual Property Office. The owner of a registered trademark has the right to exclusive use of a mark which can be asserted in courts. You can identify a registered trademark on goods, packages, manuals, or other appendages. It is usually marked in the upper right or lower right corner of the trademark. It should be noted that the United States and some EU countries have strict limits on the use of ®; in some jurisdictions, it is a criminal offense to use the ® without a registration certificate.

What happens after your application is processed?

a. Our professional team will exam the possibility of registering the trademark. As a result of this in-house review, we will recommend to you how you can modify your application if it needs to be changed at all. 

b. We will ask you for any required documents and resources to present you with a filing plan. 

c. Once you approve the filing plan, our specialist will submit the prepared document to the Trademark Office in the country of application. 

d. Once Witmart receives the acknowledgement of filing; we will notify you immediately and send you the correspondence by email.

What are the different kinds of trademarks?

There are 3 kinds of trademarks that you can apply for: the word trademark, the figurative trademark, and figurative marks with letters. 

A word mark is represented using words, letters, numbers or any other characters that can be typed. A figurative mark is represented using pictures, graphics or images. 

A figurative mark containing letters is a specific combination of pictures, graphics or images with words or letters. Figurative trademarks are also sometimes called design trademarks. 

For word marks, the font of the trademark can be changed when used; 

For figurative marks, the image cannot be altered when used; 

For figurative marks containing letters, the combination cannot be changed, otherwise it will not be protected by the Trademark Law.

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.

What are the ideal colors for a “design mark” application?

Generally, a trademark is submitted in black and white. The colors of the trademark can be changed freely after it is successfully registered. However, if the trademark is applied in certain colors other than black and white, the trademark must use the exact colors as approved. Therefore, we suggest that our customers apply for trademarks in black and white.

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

How do I select the most appropriate classes for my trademark?

Our trademark consultants would be happy to help you choose the class that is most appropriate for your trademark. After selecting a common category, the system will automatically recommend appropriate international standard categories, so you can choose classification of goods and services in line with international standards.

My trademark is being used by someone else’s Twitter account, can I get it back?

Yes, as long as you can prove that you are the rightful trademark holder. If you have an existing Twitter account, you can submit all of your trademark registration information, along with your personal/company information to Twitter. Twitter will review the information and make a decision on the handler. If you don't have an existing Twitter account, you can still submit a trademark report. As a registered trademark holder, you can report possible violations to Twitter's Policy Team through support forms: https://support.twitter.com/forms/trademark For the full Twitter Trademark Policy, please see: https://support.twitter.com/articles/18367# Other social networks have similar trademark policy to protect trademark holders and their brands.

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.

What is a US common law trademark?

A trademark used in commerce before Federally registered. Common law begins when the trademark is used for the 1st time in commerce within a geographic area. The use of the trademark must be continual and deliberate.

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.

How to check if a trademark is registered at the USPTO?

USPTO stands for United States Patent and Trademark Office which is responsible for reviewing trademark applications for federal registration and determining if an applicant meets the registration requirements. To check a filed US trademark, go to USPTO website, and click Search trademark database. You will see several options to conduct a search. Depending on the type of marks you are interested, choose the appropriate search option. Once you arrive at the Trademark Electronic Search System page, type in your Search Term to conduct a search, and the system will show you results of the marks that contain the search term you entered. From there, you would know if a trademark you want is already registered or not. 

What is the most efficient way to file for a trademark?

The trademark application process is complex and lengthy. In the US, it usually takes 8 - 14 months from filing your application to registering your federal trademark; whereas in Canada, the same process takes even longer 10 - 18 months. Therefore, it is recommended to hire experienced professionals to file and monitor the process of your trademark application. Hiring a trademark lawyer/attorney is always an option, however, fees also tend to be higher. For example, a trademark lawyer charges around $1,500-$2000 for the general filing process, excluding the hourly cost for any potential dispute.Another option is to go through trademark service providers associated with experienced lawyers and attorneys which offers a similar service but at a much lower cost. 

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. 

https://www.uspto.gov/trademarks-application-process/filing-online

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 to register your trademark in Canada?

In Canada, registration of a trademark consists of having the trademark entered on the Trademarks Register of the Trademarks Office of the Canadian Intellectual Property Office of Industry Canada ("CIPO"). The entire process takes approximately twelve (12) to eighteen (18) months, unless there are opposition proceedings, in which case the process can be much longer.    

How long does a trademark registration last in Canada and the USA?

In Canada your registration is valid for 15 years.  In the USA your registration is valid for 10 years.

Can you register a trademark with a city name in it?

In the right circumstances, you can register a trademark with a city name in it. You can apply for a trademark with a city name in it If the city’s name is used as part of the brand name for your company’s products or services, However, just because you are able to obtain a registered trademark for that city’s name, you do not own the city’s name, nor do you own the city. Trademarking that city’s name will prevent other companies from using the city’s name in association with a product or service similar to yours. If you wish to trademark a city name, you should contact a trademark professional to conduct a search of current trademarks. It is possible that someone already owns the trademark for your desired city name as it is very common for local businesses to include these city names in their promotional slogans or business names.

How quick a trademark is registered?

In the US, it usually takes 10 - 14 months from filing your application to registering your federal trademark; whereas in Canada, the same process takes roughly 12 - 18 months. The process depends on how quick the correspondent responds to any substantial/non-substantial office action from the local trademark office. 

Who can apply for trademark registration?

In theory, anyone could register a trademark as long as he/she supplies the necessary information to file the trademark. In Canada, you will need to provide your name, business name, address, a representation of your trademark such as a drawing and other required information in order to begin the process. Nevertheless, filing a trademark is not equivalent to a trademark registration. There is no guarantee that your application will go through successfully.

Does a logo need to be trademarked?

Trademarks are symbols, words, logos, sounds or shapes that differentiate your goods or services from its competitors. A logo can be trademarked when you are ready to do so. Once you registered your trademark, you are entitled to protect your logo from imitators, and persuade legal actions if your right is violated. 

Can you use the "TM" symbol without registering?

Yes.  In the US and Canada, you may use the “™” designation to alert the public that you consider yourself the owner of the mark. It is not mandatory to have filed an application with the United States Patent and Trademark Office (USPTO) or the Canadian Intellectual Property Office (CIPO). The symbol "™" may be used whether you intend to register the mark or not.    

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. 

What is required to trademark a name?

In order to successfully trademark a name, your mark needs to be either inherently distinctive or has acquired distinctiveness overtime through the owner’s usage. A mark that is descriptive in the beginning could acquire secondary meaning in the process. For example, if the public later associates your trademark that was originally descriptive with a particular source, manufacturer or producer, then it has acquired distinctiveness and can be submitted to the Trademark Office. Refer to our blog article below on how to pick a good name to trademark.

https://trademark.witmart.com/blog/Top-Things-to-Consider-When-Deciding-on-a-Trademark.html

How to find out if a logo is trademarked in Canada?

You can find out if a word, slogan or logo is trademarked as well as its current status in Canada by searching in the Canadian Trademarks Database on the CIPO website.

https://www.ic.gc.ca/app/opic-cipo/trdmrks/srch/home

What information do I need to file for a trademark?

You will need the following information to file a trademark application:  

  • Personal Information (i.e. Name, address, email address this includes businesses);
  • Type of trademark - Word Mark, Stylized Mark, Design Mark (Logo) or a Combined Mark
  • Date you began using the mark in commerce and selling the goods & services;
  • If you have not used the goods & services in commerce then you will have to provide proof at a later point;
  • Description of the Goods or Services you provide (This helps classify the goods or services you are trying to trademark); and  Specimens (Usually photos) that show the Trademark you are registering.

How does one register a trademark in the USA for non-residents?

For most non-resident filers the same process is used for all trademark applications in the US, but there are different ways to file. If you have already filed for a trademark in your own country please see our blog article on foreign filings to see if you can take advantage of the priority filing.  However, to file as a non-resident you will need to be represented by US Attorney or a qualified non-US attorney recognized by the USPTO. 

How do you protect a trademark on the Internet?

There are several steps to limit the infringement of your trademark on the Internet:

  • Use the mark consistently in commerce.
  • Obtain domain names and social media tags not only for the trademark but also derivatives of that mark.
  • Use proper trademark notices: ™ for marks in use but not registered and ® for registered marks. Proper notice alerts third parties of your rights and provides additional protections.
  • Monitor use of your mark: supervise licensees to ensure proper use of the mark; keep an eye on use of the mark online — sign up for programs like Google alerts, and pay attention to social media sites that your customers might frequent like Facebook, Twitter and YouTube.

How many times do I need to display the Trademark symbol(®) on my website?

You should display your trademark symbol at least once, in a prominent area of your site.  If it is a logo that is in the header or prominently displayed on a page, the trademark notice should definitely be used. You don't want it to be distracting if you have a lot of text. You don’t need to have it displayed after every instance of your product every time it appears on your website.

You should also include a mention of the trademark in the footer of your web-page as follows:

"ABC trademark(s) is a/are federally registered trademark(s) owned by ABC Company. Any unauthorized use is expressly prohibited."

What are the strongest trademarks?

The strongest marks tend to be fanciful or arbitrary. Invented words, like Zynga, and words with no association with the protected goods, such as Apple, are stronger than marks that are merely suggestive or descriptive. 

Should I register my trademark internationally?

Foreign filing considerations are largely business decisions. The most important target jurisdictions are those that are or will be commercially significant for ones company. In choosing where to file, consider:

  • What countries have sizable revenue streams or consumer bases for your company?
  • Do you have business operations overseas?
  • Is your company’s relevant market or targeted need growing or significant in a particular country or region?
  • Do you have anticipated expansion plans abroad?
  • Consider “defensive” filings in countries with high rates of counterfeits, copycats and piracy.

Can I trademark a word?

Common words and phrases can be trademarked if the person or company seeking the trademark can demonstrate that the phrase has acquired a distinctive secondary meaning apart from its original meaning. That secondary meaning must be one that identifies the phrase with a particular good or service.

What's the difference between registered trademark® and trademark™?

A registered trademark or service mark uses the circle-R symbol to indicate that it has been approved and officially registered whereas TM is used to signify the mark's common-law rights and/or to demonstrate that the applications were submitted but not yet approved.  

If I register a trademark in Canada, is it protected in the US?

No, trademarks or service marks are jurisdictional, meaning that a registration in Canada will not protect your mark in a foreign county such as US. The mark is only protected within the country in which you register your trademark under.  

How do I copyright a name?

Copyright protection does not extend to titles, names, slogans or short phrases. You can not copyright your name, the title of your post or any short phrase that you use to identify a work. The reason is that copyright is designed to protect works of creative authorship, it is not designed to protect how that work is identified in the marketplace, the same goes for people and places.

How can I check if a Canadian Trademark is taken?

The first step to conducting a trademark search in Canada is to look up your proposed trademark name in the Canadian Trademarks Database, which is available online or in-person at the Canadian Intellectual Property Office. The database gets updated weekly and is the most reliable source of information on which trademarks have been registered in Canada. 

How do I get started on trademarking a logo?

To successfully trademark a logo, you should first confirm if similar logo trademarks are already registered by someone else. One way to know is to do a clearance search on the USPTO website. If you are not able to find a confusingly-similar mark after a thorough search, then you'll have a good chance to register your logo. 

How much does it cost to trademark a business name in Canada?

The government fees for a trademark registration in Canada are $250 when the application is submitted; and $200 at the end of the application process after the Notice of Allowance is issued.

How do I look for good trademark names?

An important principle to remember when choosing a trademark is its distinctiveness as it serves as a brand-identifier that will help an average consumer distinguish your brand from another. Read our blog to learn more about what's considered a good trademark, click here.

How much does it cost to trademark a name in Canada?

Currently the basic government fees for a trademark registration in Canada is a flat rate of $450 in total: $250 when the trademark application is filed, and $200 at the end of the application process upon registration of the trademark. However, Canadian trademark laws are changing and are anticipated to go into affect in 2019. These changes will bring the following potential new fees:

  • $330 CAD for the first class plus $100 CAD for each additional class instead of the current. (Multi-class applications should therefore be filed without delay to avoid this significant fee increase for multi-class applications.)

Is my company name automatically protected If I am already using it?

Yes and no. A registered trade name receives some of the protections as a registered trademark, but the protection is much weaker. With a registered trade name you are basically only protected against bad-faith use of your mark by others. If someone else files an application to register your trade name as their trademark before you do, you have to oppose the application within a specific time frame.

Why are trademarks often capitalized?

Tradition, mostly. The use of upper or lower case in registration does not generally make much of a difference, except that sometimes Camel Casing can be used to change how the mark is perceived. For example, IndiGo is not quite the same as indigo, Indigo, or INDIGO. However, this is quite uncommon in practice.

Do I need a Lawyer/Attorney to file a trademark?

While it is possible to file a trademark application without a lawyer/attorney, it is generally advisable to retain some kind of professional assistance to help you with clearing the mark, composing and filing the application (especially the list of goods and services), corresponding with the trademark office after filing if your application must be changed to make it registrable, and representing you in any opposition or other proceedings that may arise. Witmart does not practice law, but it can help you with the clearing and application stages.

Can you trademark your name?

In the U.S. one should be warned that the USPTO is unlikely to register surnames or an individual's name or likeliness for trademark protection unless certain conditions are met. One must prove that the name has a "secondary meaning" by being part of a unique brand that is used in marketing and commerce and is widely recognized. In some cases, a name can be trademarked when it is one of a kind, but it requires substantial evidence to prove this. 

In Canada currently, famous names are only registrable as trademarks if the applicant can establish by way of evidence that the applied-for name has “acquired distinctiveness” or “is not without distinctive character” in Canada and so long as the other statutory requirements are met. In general, the evidence needed by such applicants decreases as the level of fame of the individual increases. Unfortunately, recent amendments to Canada’s Trade-marks Act will make it even more difficult to secure registration for a famous name used as a trademark in Canada.

Can names be referenced and not apply to copyright?

Fair Use of Copyrighted Material

What is "fair use"?

Fair use is the right to use a copyrighted work under certain conditions without permission of the copyright owner.  This principle helps prevent a rigid application of copyright law that would stifle the very creativity the law is designed to promote.  It allows one to use and build upon prior works in a manner that does not unfairly deprive prior copyright owners of the right to control and benefit from their works.  Together with other features of copyright law, fair use reconciles the copyright statute with the First Amendment and freedom of expression/speech rights. 

Can a business idea or a service be copyrighted in North America?

​Copyright protects the expression, in a fixed form, of a business idea and not the idea itself. Thus, neither the Copyright Act nor common law will help protect your business idea based on copyright. If you want protection, you must fix it in a tangible form (for example, a photograph, a video, a piece of writing, a sound recording, a computer program).

How to count items on the pick list under Goods and Services for a Chinese Trademark Application?

The China Trademark Office uses the Nice Classification as a way to categorize its goods and services; but instead of counting items on the pick list under each class, the Chinese Trademark System organizes them into individual groups under each class. Pick list items with similar characteristics are grouped together and each group has its own unique code in the Chinese Trademarks Database. For example, Printing Service belongs to Group [4011] in Class 40 and is assigned a numeric code  400111. This method of categorization allows applicant to cross search other groups that usually carry similar pick list items and makes it easy to identify items that might cause potential conflicts with the application. Consequently, grouping helps you to properly count the pick list items under Goods and Services; and it is a good idea to draw down relevant groups, items before you apply.  

How do you protect photos for a blog?

As a blogger, you put countless hours of your time into creating original content for your viewers. Having it stolen can be frustrating and upsetting.  Here are 4 things to help you protect your blog content:

1. Protect your blog content and website with "Terms of Use" and "Disclaimers"- Terms of Use is a website policy (which sometimes is also called Terms of Service or Terms & Conditions) that protects your blog content (and your business) by outlining what visitors can and cannot do with the information on your site.

2. Register your Copyright - Registering your blog posts with the Copyright Office of your jurisdiction gives you legal grounds to bring a lawsuit for copyright infringement. If you’re familiar with copyright basics, you know that copyright protection is automatic and your posts are your property the minute you publish each post on your blog. However, to have legal standing to bring a lawsuit, you must register that post with the U.S. (or other) government.

3. Send a Cease & Desist Letter - This formal letter is like a warning letter to the party that is using your copyright material.  Also, the letter should outline and reference the posts taken with links and usually a window of time to comply with your letter. 

4. Use the Digital Millennium Copyright Act- This law is comprehensive but, the main provision that protects content is the Notice and Take-down rule. If your content is stolen then you can use this rule of Take-Down and let the platform or web host know via a take-down notice and the content should be removed.

How do you know if a domain name is Trademarked or Copyrighted?

For a variety of reasons web addresses (also known as a domain names or URLs) aren't protected by Copyright. Even though Copyright doesn't protect domain names they are protected by Trademark law. There are a couple of ways you can check if a domain name is Trademarked:  

1. Online TM Searches - USPTO trademark database and CIPO Trademark database; and 

2. Companies that search for you like Witmart and other Intellectual property service companies.

Can I change the name of a mark that is in the filing process? How much is involved?

No. Once you have filed a trademark you cannot fundamentally change the application. There are a lot of things that you can change in your trademark application, but the trademark itself is not one of them. The only exception is when you have a really minor typo or something really insignificant, for example, a missing period in the end of the slogan.    But the general rule is, after you file your trademark, you can't alter the trademark itself.

How do I protect my trademark across countries?

Trademarks are jurisdictional meaning a trademark is only protected within the country in which you register it in. Although the Madrid International Trademark System makes the registration of trademarks in multiple jurisdictions around the world possible, it is not an ideal method of application because of its associated risk. Therefore, to protect your trademark from infringement, it is recommended to register it in every country you are interested in obtaining a registration from.

How do I prepare for a trademark registration?

There are many elements which go into a trademark application. The core components are applicant individual/business information, type of mark, basis of use and goods and services, application fee and specimens in some jurisdictions. Although preparing an application itself is not difficult, accurate evaluation of a mark and appropriate response to an Office Action are keys to a successful registration. For an overview of a US trademark application process, please click here

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 I Trademark a youtube channel?

Yes, you can trademark a YouTube channel. You can trademark the name, logo, or slogan that you are using to promote your YouTube channel. As a YouTube channel is considered to be an entertainment service, it can be subject to the standard protections under trademark law.

What are the classes of trademark in Canada?

Canada adopts Nice Classification which is an internationally-used system of classifying goods and services for trademark applications. More about Nice Classification can be found in a previously-posted FAQ: What is Nice Classification? What are the classes in the Nice Classification?

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. 

What is an office action?

A USPTO examining attorney sends an Office action to notify an applicant about issues with his or her application. This type of action will include the reason why registration is being refused or what requirements must be satisfied. In most cases, the applicant must respond to an Office action within 6 months from the date the Office action is issued or the USPTO will abandon the application, the application fee will not be refunded, and your mark will not register.    There are two types of Office actions: non-final and final actions. A non-final Office action raises an issue for the first time. A final Office action issues when the applicant's response to the prior Office action fails to address or overcome all issues. An applicant's response to a final Office action generally is either compliance with the requirements or an appeal to the Trademark Trial and Appeal Board.

How to avoid trademark violations in the US?

To avoid trademark violations, you need to find out if the trademark you want is available. By searching the USPTO database, you can tell if the proposed mark is already registered or is pending for registration. Sometimes, even when a mark does not have another identical mark in the USPTO database, it can still infringe another trademark if two marks are confusingly similar to each other. Therefore, it is always recommended to conduct a comprehensive trademark clearance search to identify any potential risk for your trademark before submitting the application.   

How to find out if a slogan is trademarked?

How to find out if a slogan is trademarked?

In order to find out if a slogan is trademark, you can conduct a search in the trademarks database of specific jurisdictions that interest you. It helps you to identify any trademarks that have already been registered or applied for that is either similar to your trademark, or used on related products or services. In Canada, you do that by searching in the Canadian Trademarks Database whereas in the US, you go to the Trademark Electronic Search System (TESS) to look for any conflicting marks before you apply.  

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.

How to get a copyright for a company name

Copyright protection does not extend to titles, names, slogans or short phrases, the Copyright Office has made that much very clear. . The five things that cannot be copyrighted are Titles and Names, Ideas, works by most Governments, works without Authorship/Facts and Fashion.

What's the difference between a brand logo and a trademark?

A brand logo can be a trademark, but a trademark is not necessarily a brand logo. A brand logo is a visual representation of a brand's message and positioning. It evokes emotion from the consumer. Your brand has value and a brand logo is an important part of your brand image that sets your business apart. On the other hand, a trademark is any word, symbol, sound or a combination of all that distinguishes the source of the products/services; and this gives you an exclusive right to use your brand logo.Since a brand is a valuable asset in business, protecting it by registering a trademark prevents competitors from infringing your mark and causing confusion in the market.

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 is a Patent?

A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application. Patents may be granted for inventions in any field of technology. An invention can be a product – such as a chemical compound, or a process, like producing a specific chemical compound. Many products in fact contain a number of inventions. A great example is a laptop computer that involves hundreds of inventions that work together.

Best way to find out if you are infringing a Trademark on YouTube?

The best way to avoid infringement of a Trademark on YouTube is to not use that trademark unless you have express permission to use that trademark from the Registrant. 

Trademark Infringement on YouTube

  • YouTube policies prohibit channels as well as videos that infringe on trademarks. This means, that if someone spots your YouTube account using someone else's trademark, they are within their rights to contact YouTube.  
  • YouTube does provide a system for reporting infringement violations, however YouTube strongly encourages users to mediate issues themselves for faster results.  
  • Trademark owners can directly contact users through YouTube's private messaging system.

Can you trademark the name of a book before it's written?

Generally, titles of works that are part of an ongoing series are protected under most trademark laws, an example would be the Twilight series or Hunger Games trilogy. However unlike series titles, titles of a single work, whether a book, periodical, song, movie, or television program, normally, will NOT be protected under trademark law.  To quote the USPTO, “Regardless of the actual relation of the title to the book,” courts treat all single title works as "inherently descriptive" at best and "inherently generic" at worst – unless the single title has had “wide promotion and great success.”

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 at 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 the Trademark applicant’s compliance to requirements. The mark will also be inspected based on its clarity, descriptiveness, distinctiveness, deceptiveness, conflict with earlier application, and 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, the Trademark application will be rejected.

Advertising – If the Examiner's objections are overcome or there are no objections at all, then the Trademark application will be approved for advertisement in the Trade-Marks Journal, a weekly publication by CIPO which lists trademark applications seeking registration.  The purpose of having your application published in the Trade-Marks Journal is to allow for members of the public to have an opportunity to oppose your proposed Trademark, which is called the "Opposition Period".

Opposition  - During the Opposition Period third-parties may oppose a 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 application will be registered. CIPO will then issue an official Certificate of Registration.

Does Canada use the "Nice Classification" system?

In Canada the use of the Nice classification system is voluntary. However, grouping goods and services according to the Nice Classification is expected to become mandatory in the next year or so, once legislative changes to the Trademarks Act come into force.

How to find out if a logo is trademarked?

Other than researching online and comparing similar logos on the internet, one can search on the USPTO's Trademark Electronic Search System using the Design Search Code Manual to determine if a logo has been trademarked. Even after searching on the USPTO database and the results appear reassuring, there is no guarantee that your logo can be registered as the USPTO examiners do their own searches to ensure there is no other conflicting marks that could cause confusions in the market. In additions, trademark companies such as Witmart offer Comprehensive Search Packages that cover searches for both word and logo trademarks.

What is a clearance search?

A trademark clearance search is also known as a due diligence search; it is a systematic search for registered and unregistered trademarks including pending, common law, abandoned and expired trademarks. A clearance search is important because it helps to identify any potential obstacles to successfully register your trademark. The common hurdles for a trademark registration include existing same or similar marks, similar marks used for same or similar goods and services, same or similar marks in other jurisdictions you wish to apply for and merely descriptive marks. 

How to conduct a trademark research?

Trademark research begins with identifying the obviously conflicting trademarks in the USPTO or CIPO records which can be accessed through the Trademark Electronic Search System (TESS) or the  Canadian Trademarks Database. Similarity of the marks in sound, appearance, or meaning as well as the commercial relationship between the goods and services identified by the marks play a significant role in determining the success or failure of your trademark application. For example, the mark T.MARKEY and TEE MARQEE are phonetic equivalents of each other. Spelling the word differently does not substantially distinguish the two marks because consumers could still believe the products and/or services sold under these two marks come from the same company. Because of that, the examiner will likely refuse registration of your mark on the ground of likelihood of confusion. Hence, in order to conduct a proper trademark research, it is necessary to search the trademark databases thoroughly for any phonetically similar words, synonyms, homonyms, and/or foreign words with similar meanings. 

What\'s the difference between a business registration and a trademark?

What is the difference between a business registration and a Trademark?

A business name essentially designates the name under which a business is operated, for example, ABC Corp, a company, which was formed by the merger of 123 Corp and DEF Corp. Though the parent companies have different names, the company established after the merger is registered under the name ACME Corp. A business name may or may not be trademarked but needs to be registered depending on the jurisdiction you are in.

A Trademark identifies the source of products or services. It can be a word, phrase, design, or symbol (or a combination of any of them) that distinguishes a business from its competitors. When you own a Trademark, you have exclusive rights to the mark, which prevents anyone else from using it in any jurisdiction you are registered. Provided you comply with the requirement to renew your Trademark, your Trademark will have an unlimited lifespan.

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