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 and in each case will depend on:
- (a) the nature of the application;
- (b) the current turnaround time of the Trademark Office in question; and;
- (c) whether there have been any significant objections or oppositions.
In general, it is reasonable to expect that it will take anywhere from 6 months to 2 years to obtain a registration.
The trademark application will be allowed by the Trademark Office in question once the Applicant has overcome any objections of the Trademark Office and any oppositions by third parties.
Term of Registration
The initial term of a trademark registration in Canada and the United States is 10 years. Registrations can thereafter be renewed in each country for additional 10 year terms respectively upon payment of a fee. An additional Declaration must be filed in the United States between the end 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.