intellectual property FAQ

Coastal Intellectual Property AgentTo assist you in making an informed decision, we have answered some frequently asked questions regarding trademarks.

If you have further questions, please email us at info@coastalip.com. We would be happy to answer your inquiry.

 

1. What is the procedure to register a trademark in Canada?

Trademark research/searching

At Coastal we start the process by first understanding your business and the wares and/or services you intend to provide in association with your proposed trademark. Where necessary, we conduct an extensive search of trademark records and un-registered trademarks, to evaluate the registrability of your trademark. The results of our research are presented to you in a comprehensive report outlining our recommendations for your trademark.

Trademark application

We prepare your trademark application and submit it to the Trademarks Office along with the appropriate filing fee. Your application is then reviewed by the Trademark Office Examiner. We receive their response within six to eight months and work with you to address any objections they raise.

Trademark approval

Once we’ve successfully overcome any of the Trademark Office Examiner’s objections, your trademark will be advertised in the Trademark Journal to give the public an opportunity to oppose your trademark application. Due to the costs incurred during opposition proceedings, it is rare to see any frivolous oppositions. Should opposition occur, we work closely with you to contest any opposition within the required time limits.

Trademark registration

The final step of the process involves submitting a final registration fee and, if required, a Declaration of Use.

Your trademark registration gives you exclusive rights to use the mark for 15 years and it can renewed indefinitely.

Trademark Maintenance

We can help you protect your trademark by monitoring trademark registrations, assisting you with oppositions, and assisting you in defending cancellation proceedings if needed.

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2. What is the difference between a trade name and trademark?

Unlike a trademark, which is used to identify the source of a product or service, a trade name is used to identify a business or company. It is the name under which a business operates.

Depending upon the context in which it is being used, a trade name can also function as a trademark. When used as a noun, it is considered a trade name. When used as an adjective, it is considered a trademark. For example, when purchasing light bulbs from Coastal Inc., Coastal Inc. is a trade name. When purchasing Coastal light bulbs, Coastal is a trademark.

Many people are under the mistaken belief that registering their trade name with the Registrar of Companies, or incorporating their business—provincially or federally—affords them all-encompassing rights in that name, including trademark rights. Unfortunately, this is not the case. What many people do not realize is that federal trademark registration is often superior to federal or provincial company registration.

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3. What are the benefits of registering your trademark?

There are a number of distinct advantages to registering a trademark including but not limited to the following:

  • Registration of your trademark will provide you with protection of your mark throughout Canada, regardless of where you are using your mark.
  • A registered trademark gives you the right to sue for trademark infringement, should a competitor copy or imitate your mark.
  • Trademark registration affords you a number of other legal advantages, including the right to sue for depreciation of goodwill, and the right to proceed to the Federal Court of Canada to obtain a nationwide injunction.
  • In most instances, registered trademarks become incontestable after five years.
  • Registering your mark often deters others from using a mark that is the same or similar.

You spend numerous dollars placing your trademark on items such as signage, packaging and business cards, and you spend countless hours building your company’s reputation. Registering your mark could avoid wasted time, energy, and money spent on legal disputes.

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4. Why should I use a registered trademark agent?

A registered trademark agent is a professional who has been apprenticed, examined, and approved by the Trademarks Office to represent trademark applicants and registrants.

Registration of your trademark provides legal title to intellectual property in much the same way as a deed is title to a piece of real estate. Preparing and following through on a trademark application can be a complex task, particularly if a rival challenges your right to the mark. An experienced trademark agent can save you time and money by avoiding problems caused by issues like a poorly prepared application or inadequate research.

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5. What is the difference between a registered and an unregistered trademark?

In Canada trademark rights are acquired under the Trade-marks Act through registration and use.  An unregistered trademark is one used in industry without the benefits of registration.  The owner of an unregistered trademark is not afforded the many benefits that the owner of a registered trademark is afforded.

For instance, an owner of an unregistered mark may develop common law rights to a trademark using a trademark in association with wares/services for a length of time.  Such common law rights may provide the basis to initiate court proceedings.  However, the user of an unregistered trademark has a heavier burden of proof and must provide extensive evidence establishing use as a trademark, its exclusivity, distinctiveness and reputation.

Under the Trade-marks Act the rights of a holder of a registered trademark are broader and more extensive.  A trademark registration is prima facie proof of ownership in the event of a legal dispute. 

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6. What is a trademark?

The essential characteristic of a trademark is that it serves as source identifier by distinguishing the goods and services of one person or company from those of another.

Traditionally, a mark has consisted of a word or words, a symbol or logo, or a combination of both.  The word or words may be invented or may appear in dictionaries.  A symbol may be an abstract design, stylization or a simple reproduction of everyday objects or images.  A mark may also include letters, numbers, or combinations of both.

Over time other elements besides words or logos have come to serve as source identifiers by distinguishing the goods and services of one person or company from those of another, thus serving the function of trademarks.  These are often referred to as non-traditional trademarks and can include things such as shapes, sounds, smells, colours, tastes, motion marks and holograms.

With consumers becoming more and more “brand loyal”, trademarks have become among the most valuable assets a company has. Where trademarks once merely identified the source of products and/or services, they now also represent the reputation of the business providing the products and services.

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7. How long does it take to register a trademark in Canada?

It typically takes between 18 months to 2 years to obtain a trademark registration. However, it is possible to expedite examination of the application if there is just reason to do so.

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8. Do I have to use my mark before applying for registration?

No, a trademark application can be based on proposed use. However, in most instances your trademark must be used in Canada before it can be registered.

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9. How long does a Canadian registration last?

Your trademark registration gives you exclusive rights to use the mark for 15 years and it can renewed indefinitely, provided you continue to use your mark.

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10. Do I need to conduct a trademark search?

It is advisable to perform a trademark search before using your trademark, preparing marketing materials, or committing to a logo or design because your new name, slogan, or logo, may already be in commercial use. Another company may have used or have registered a similar trademark, which may lead to confusion or costly legal battles. The cost of the search is often far less than the cost entailed to change the mark later if it is determined that there exists a prior user in the related field.

After trademark rights are created and registered, periodic searches should be conducted to determine if other parties are attempting to register a conflicting trademark.

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11. How can I search and register a trademark outside of Canada?

Registering your trademark with the Canadian Trade Marks Office only protects your rights in Canada. If you are selling wares or services in other countries, you should consider registration in each of those countries.

As agents recognized to practice before the United States Patent and Trademarks Office, we can assist you in conducting searches and registering your U.S. trademarks. Through our network of qualified trademark agents, trademark lawyers and IP professionals we are also able to assist you with searching and registration of your trademarks around the world.

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12. How can registering a trademark end up paying for itself.

Trademarks are a valuable asset for any company. The value of a trademark increases upon registration of the trademark. Income in trademarks can be generated by assigning or licensing rights to a trademark.

Also, registration may deter others from using a similar mark. You spend numerous dollars placing your trademark on items such as signage, packaging and business cards, and you spend countless hours building your company’s reputation. Registering your mark could avoid wasted time, energy, and money spent on legal disputes.

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13. Should I consider trademark registration?

  • Do you have a name, slogan, or logo that you are using or intend to use to distinguish yourself in the marketplace?
  • Are you using, or do you intend to use your trade name as a trademark?
  • Do you intend to expand, franchise, or sell your business?
  • Do you intend to offer your products and services nationally and/or internationally?
  • Are you displaying your trademark on a website?

If you answered yes to any one of the above questions, you should consider talking to a registered trademark agent to discuss the benefits of trademark registration.

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14. Are there any other online trademark registration and intellectual property resources that I can refer to?

CIPO (Canadian Intellectual Property Office) has an excellent online resource library with further information regarding trademarks and intellectual property.

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