Sep23th

2013

September 23, 2013 @ 06:00:00
Self-Filing Trademark Applications
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Last week, I have delivered a seminar on trademarks through Vancouver Business Network.

Among other things, I explained that business owners can file their own trademark applications in Canada because there is no mandatory rule that would require them to use a trademark agent for that. I also said that it may not be such a great idea if you don’t know what you’re doing.

The night after the seminar, I received an email from a business owner who, about a year ago, was shopping around for a good deal to register three trademarks for his business.

Eventually, he decided to file them on his own.

Unfortunately, he now received office actions for all three of them.

One is especially troublesome, because the examiner is of the opinion that the mark is descriptive of the services in association with which it was applied for.

The problem is not with the mark itself, the problem is with the way the business owner drafted the statement of wares and services. He should have worded the statement of wares and services more broadly, so that it wouldn’t be essentially the description of the mark itself. Unfortunately, he can no longer do that, because after the application has been filed, one cannot broaden the scope of goods and services any more.

So the end result is: he saved a few thousand dollars on lawyer fees, yet he wasted a year investing his time, effort and money building a brand he can’t register as a trademark.

Was it worth it?

Categories:Intellectual Property:Trademarks
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