The Basics:

What is a Trademark?

A trademark is a mark which is used to distinguish your goods and services from those of others. A trademark can be a business name, a product name, a logo, a slogan, or the key element of a domain name.

When is a Trademark Available?

A search must be conducted to assess whether or not your proposed trademark is available for your use. While preliminary searches can be conducted with a view to identifying any obvious or direct hits, a comprehensive search covering the trademark database, business names and domain names, the Internet and potentially other sources of prior rights, is highly recommended prior to the adoption of a trademark.

Trademark searches should be conducted in each of the countries in which the trademark is intended to be used.

Why Register a Trademark?

  • Gives you the exclusive right to use the trademark across the country
  • Provides clear evidence of your right to the trademark
  • Facilitates your ability to enforce your trademark and claim damages through trademark infringement proceedings

Registration of a Trademark

If, based on the results of an appropriate search, the proposed trademark is considered to be available for use in a given country and otherwise meets registration requirements, we recommend that an application to register that trademark be filed as soon as possible in that country to establish priority and to obtain the benefits identified above.

Trademark registration timeframes vary from country to country. In Canada and the United States, it takes approximately 10 to 14 months to obtain a registration, assuming there are no significant objections or oppositions. The trademark application will be allowed by the Trademark Office once the Applicant has overcome any objections of the Trademark Examiner and any oppositions by third parties.

Term of Registration

The initial term of a trademark registration in Canada is 15 years, while in the United States it is 10 years. Registrations can thereafter be renewed in each country for additional 15 and 10 year terms respectively upon payment of a fee. An additional Declaration must be filed in the United States between the ends of the 5th and 6th years following registration providing confirmation that the trademark is in use in order to maintain the registration.

Trademark Use Requirement

In most countries, a trademark registration is vulnerable to expungement if the trademark has not been used in association with the wares and services identified in the registration for a period of time. In Canada, that period of time is three years.

SELECTING AND PROTECTING YOUR TRADEMARK, Article by Michael Bean