Aug09th

2013

August 9, 2013 @ 06:00:00
Four Important Elements of a Trademark Application
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Business owners who want to protect their branding need to know that there are four important elements in any trademark application.

This is important regardless of whether they use the Trademark Factory™ to register their trademarks, whether they file themselves or whether they use a different trademark agent or a lawyer (why would they?).

These four elements are: trademark owner, trademark, goods / services, and dates.

The first one is straightforward: a registered trademark must be owned by an entity, a partnership or an individual. The public and Canadian Intellectual Property Office need to know who it is. If during the registration process, the trademark changes hands, you can always assign the pending trademark application to a new owner.

A trademark application may only cover one single trademark. If you have several trademarks, each will require a separate application. While there is often a temptation to combine several trademarks into one application to cut the cost of registration, it’s really not a good idea, especially if you use thus combined trademarks separately. This is because in Canada any trademark that has not been used as registered for 3 years or more, can be cancelled on request of any third party. So if you lump a logo and a tagline into a single trademark registration, and then your tagline changes, you may lose rights in both the old tagline and the logo. This is because the registration protects your rights to the entire trademark and not to its elements.

Importantly, trademarks (whether registered or not) don’t give their owners a monopoly over the name or the logo itself. They only give a monopoly over their association with specific products and services for which the name or logo are used. For example, BLUE SHIELD trademark is owned in Canada by two completely different entities: one in association with prepaid financing and administration of medical services, and the other in association with various items related to welding. This is why the trademark application requires the applicant to specify in association with which products (wares) and services they use or are planning to use the trademark. Canadian Intellectual Property Office is very pedantic about the way the list of these products and services is drafted. If an examiner believes that a term in that list is not specific enough, they will issue an office action requiring that the application be amended. I will provide several tips about drafting the list of goods and services in my next post.

Finally, the dates. In Canada, one can only get a trademark registration if the trademark is being used in association with each and every one of the goods and services listed in the application. It is possible to apply for a registration before the use starts (it’s called “proposed use”), but the registration certificate will not be issued until the business owner files what’s called a declaration of use. A simple rule of thumb is: only list those products and services that you are currently using the trademark for and those that you believe you may start using it for in the next 2-3 years. If you have already been using the trademark at the time when you file the application, it is important to specify the earliest date that you can prove with evidence that you were using the trademark for.

The trademarking process used to be full of frustrations and complications for business owners. That is until the Trademark Factory™ was launched with its unique triple Peace-of-Mind guarantee. We guarantee that you will know your budget to a penny before you spend a dime; we guarantee that your trademark will be approved by the Canadian Intellectual Property Office – or you get all of your money back, including what you pay to the government; and we guarantee that you will not be frustrated with not being able to get a hold of your lawyer. This service is really the natural choice of business owners who value their branding and want to protect it in Canada.

Categories:Intellectual Property:Intellectual PropertyTrademarks
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Vancouver Office: 778.869.7281
300 - 1055 W. Hastings St., Vancouver, BC  V6E 2E9
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