Trademark Applications and Registrations

Registering a trademark involves more than filling out a form. Working with an experienced lawyer helps to ensure that the applied-for trademark meets the criteria for registration and is available for use before any application is prepared and filed.

AT PRESENT, THE FOLLOWING ARE ACCEPTABLE FOR REGISTRATION UNDER CANADIAN LAW:

Words.

Letters or numerals.

Logos (designs).

Colour (as a feature).

Three-dimensional objects (non-functional aspects of shapes).

Packaging (trade dress or distinguishing guise).

Sounds.

At least some clearance searching can help you avoid filing an application for a trademark that does not meet the registration criteria and/or is unavailable because it is being used by another business.

We have significant expertise in trademark clearance searching and obtaining trademark registrations for clients of various sizes and in diverse industries, from Canadian start-ups to multinational corporations. We also prepare and file official marks and certification marks.

Our experience with settling trademark disputes and transactions gives us the insight to prepare trademark applications that are better able to survive an attack in a trademark dispute or pass due diligence when a trademark is sold.

Our extensive network of international foreign associates helps us to clear trademarks and obtain registrations in the United States, the European Union, and beyond.

OUR TRADEMARK APPLICATION AND REGISTRATION SERVICES INCLUDE:

Searches and opinions to assess whether a trademark is available for use and registration, as well as trademark validity opinions and trademark infringement opinions.

Preparing and filing trademark applications in Canada.

Navigating Canadian trademark applications through the examination process, including responding to Canadian examiner's reports and registration.

Supervising the preparation, filing, prosecution and registration of foreign trademark applications via trusted foreign associates.

Advising on what steps your business needs to take to maintain its trademark rights.

Trademark portfolio services, leveraging our state-of-the-art deadline and reminder system.

Services / Trademarks

Trademark advice for businesses building and protecting brands

Choosing a brand, registering it and defending it are related decisions. I help businesses assess trademark risk, apply for protection and address conflicts in Canada, with international protection coordinated where needed.

My practice includes work for Canadian businesses, international brand owners and foreign counsel seeking assistance with Canadian trademark matters.

Before adopting or filing a mark

The starting point is to understand the proposed name or design, the goods and services, the relevant markets and any existing use. A search and legal assessment can help identify obstacles before further investment in packaging, websites or a launch.

The filing strategy may also consider whether to apply for a word mark, a logo or both, and which goods and services should be covered. The choice should reflect how the brand is used and what the business needs to protect.

Applications and examiner objections

I assist with Canadian trademark applications, descriptions of goods and services, responses to examiner reports and portfolio maintenance. I also assist with Canadian issues arising from Madrid Protocol designations.

An examiner’s objection may concern the wording of the application, another mark or an objection to registration. The response should address the actual issue and the business consequences of any proposed limitation or amendment.

Oppositions, non-use proceedings and disputes

I advise on asserting and defending trademark rights, including oppositions, section 45 non-use proceedings and litigation. I also assist with negotiated resolutions, coexistence arrangements and brand transitions where appropriate.

These procedures serve different purposes. The right response depends on the right asserted, the evidence, the procedural stage and the commercial objective.

Canadian protection for international brands

Foreign counsel and international businesses can instruct me on Canadian filing and prosecution work, Canadian refusals, disputes and portfolio questions. The scope of work, reporting and communication arrangements can be agreed at the outset.

For U.S. and other foreign trademark work, I coordinate with appropriately qualified counsel.

Starting a trademark inquiry

Please provide the proposed mark or public application number, a short description of the business, the countries involved and any known deadline. Identify the other parties if there is a dispute. We will confirm arrangements before receiving confidential documents.

Discuss a trademark matter

Related services: IP disputes | Domain name disputes