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In general, a trade mark is used to distinguish
one trader's goods or services from another's. A trademark is a word, logo,
symbol, design, or a combination thereof, displayed on wares or associated
with services, to identify the wares or services to purchasers. The
trademark generally indicates that the wares or services come from, or are
approved or sponsored by, the same source as all other wares or services
associated with the same trademark. A trademark may also indicate that the
wares or services meet the same standard of quality as all other wares or
services associated with the same trademark.
Prior to using the mark
and/or filing for protection, we recommend that a trade mark search be
conducted in either the Canadian or in the United States Trade Mark Office
records to determine the availability of the mark. If the search results are
favorable, you should then consider filing a trade mark application for the
mark.
The cost of filing corresponding foreign applications varies considerably
from country to country. Foreign applications must be filed within 6 months
of filing the Canadian application if priority is claimed from the Canadian
filing date. The cost of filing in the United States varies, and depends on the number
of classes of goods and services for which protection is sought.
If you are contemplating using a trade mark in the United States, then we recommend that
at least a United States clearance search be implemented at the same time as, or soon
after, the Canadian search. The types of available United States searches
varies considerably.
After the application is filed in the
Trademarks Office, it is examined by a Trademarks Office examiner. For
example, the examiner searches for potentially confusing trademarks, and
assesses other potential obstacles to registration, as discussed above. If
the examiner raises no objections the application is approved for
publication in the Trademarks Journal. For a two-month interval after
publication the application is subject to opposition by other parties.
Oppositions, which are relatively uncommon, may for example be based upon
prior use of an allegedly confusing trademark. It typically takes up to a
year to "prosecute" an application through the foregoing stages, assuming
that there are no examiner's objections or oppositions.
After filing a trade mark application, there
are normally further costs associated with guiding the application through
to the registration stage, such as convincing a trade mark Examiner that the
application is one for which a trade mark registration should issue. This
procedure is referred to as prosecution of a trade mark application. The
prosecution costs will depend on the number of objections raised by the
Examiner, if any, and the difficulty encountered in overcoming these
objections. Also, once a trade mark is allowed in Canada there is a
registration fee to be paid.
Please note that the time span between
preparing and filing an application and obtaining a registration is often at
least twelve months in Canada.
Before obtaining a trade mark registration, a trade mark user should
identify that its mark (whether words and/or a logo) is being used as trade
mark by including the symbol "TM" beside the mark. The symbol "R (circled)"
should be used for registered trade marks only. |
