Frequently Asked Questions

A trademark cannot contain another trademarked phrase. 

No, a trademark name which merely describes your product or service is not registrable. 

No. This would lead to a likelihood of confusion between your mark and the registered mark. 

No. A trademark registration can only be granted to a limited number of goods and services associated with the trademark.

No, you may not. Due to federal drug laws refusal may be based on a lack of intent to lawfully use the trademark in commerce.

Federal registration is required to protect a trademark in an American territory in most instances. However, Puerto Rico does have its own registry that an applicant can take advantage of.  

The applicant may receive an office action outlining a likelihood of confusion and have to either amend, respond to the office action with arguments or abandon the application.  

There is one federal registry as well as one registry per state. Puerto Rico also has it's own trademark registry. 

The trademark holder. Although registration may be blocked by the IP office applied to, it is the responsibility of the trademark holder to watch advertising journals for any marks they wish to oppose. 

A petition to cancel a registered Trademark is possible if these violations are present: 

• The owner filed the application in bad faith
• The Trademark is proven to be immoral or in conflict with public policy
• The Trademark is deceiving the consumers
• The Trademark is describing the characteristics of the good/service
• The Trademark is generic and/or functional
• The Trademark is not capable of making the good/service distinct

A cancellation is a proceeding in which a party seeks to cancel an existing registration of a Trademark. Under the law, a person who believes he will be damaged by the registration may file a petition to cancel. 

The United States Patent and Trademark Office (USPTO) is the agency of the Department of Commerce in charge of prosecuting and granting Patents and registering Trademarks in the U.S. The USPTO advises the President, Secretary of Commerce and various government agencies on ways to protect, enforce, and promote intellectual property policy in the U.S. and abroad.

The website of the USPTO is www.uspto.gov 

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.

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.

You may sell, bequeath or otherwise transfer your rights to a Trademark through a process called assignment. You may also license rights to your Trademark. Trademark Assignment is an act by which the rights in respect of a Trademark are conveyed from one person or organization to another.

Trademark squatting is a nightmare for brand owners and global business entities today. It is also increasing in many countries around the world. Generally, Trademark squatting is an act of registering other people’s marks as their own by squatters in other countries in order to gain benefits from original marks or real Trademark owners. Many brand owners or business entities have recently confronted this problem while there is no particular resolution. 

In this scenario, you have the common law trademark rights which are acquired through actual use of the trademark in association with the goods and services. The owner of a common law trademark can assert rights against other confusingly-similar marks in a specific geographic region where the owner has built up goodwill. However, unlike a registered trademark, a common law trademark has a limited protection and can not be enforced federally throughout the US. Therefore, it is in your best interest to register your trademark to gain full protection nationally. 

Consumers' purchasing decisions are often influenced by brand names. As your business reputation grows, your brand will be more valuable as it has the power to direct consumers to the rightful source of products. Hence, applying a trademark becomes an inevitable step to protect the business from imitators and helps consumers to identify the product. 

If you have not made up your mind on which brand name or logo to use for your business, you should not file a trademark application. Although certain information on an application such as address and phone number can be changed after filing, a trademark name amendment is considered a material alteration on the application. Therefore, once you submit your trademark application, it is final. 

Yes, as long as the person is using that brand or company name. A trademark can be any one or a combination of words, sounds or designs used to identify goods or services of one person or organization from those of others.In order to obtain and maintain a registration for a trademark, the trademark must be "used" in commerce. If you are not using your brand or company in the normal course of trade, you will lose your right to claim trademark use.

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 121 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 121 countries covered by the Madrid System's 105 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.

Maybe! For most registered Trademarks they are only protected in the jurisdiction that they are registered in.  However, in some cases a U.S. registered trademark could be enforced in other countries.  A recent famous case that was decided dealt with this issue of enforcement in other jurisdictions - Trader Joe’s v. Michael Norman Hallatt. In this case Michael Norman Hallatt purchased Trader Joe’s-branded goods in Washington State, transported them to Canada, and resold them there in a store he designed to mimic a Trader Joe’s store called Pirate Joe's. Trader Joe’s sued under U.S. Trademark law and after a lengthy appeal, won based on the merits of the case. So, yes you can enforce a U.S. trademark in Canada, but  it depends on the facts of the case.   

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.

A trademark search 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. 

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. 

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.

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.”

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.

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.

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.

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 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.  

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.   

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. 

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.

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.  

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.

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.

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.

​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).

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. 

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.

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.

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.

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. 

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.

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.  

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.  

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.

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.

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. 

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.

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.

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

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

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. 

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. 

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.

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

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 18 - 21 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. 

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

® 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.

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.

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