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5 Key Points That Must Be Considered Before Filing A Trademark Application

5 Key Points That Must Be Considered Before Filing A Trademark Application

In my previous articles, we have discussed the importance of choosing a strong brand, how to choose a strong brand, how to conduct a trademark search, the benefits of employing a trademark professional and the differences between the ™ and ® symbols and how to use these symbols correctly.

Now, it’s time to talk about the mechanics of collecting the key information that is required to file a trademark application.   The Canadian Intellectual Property Office is a complete resource for learning about trademarks, trademark searching, filing a trademark application on-line and so much more.

When you arrive at the site, scroll down to the “Services and Information” Section and click on “Trademarks”.  Here you will find all of the information that you will require to file a successful trademark application.

If this is your first time to the site, I recommend that you go to the “Learn Section” and read: A Guide to Trademarks.   This guide provides answers to most general trademark questions in “Understanding trademarks – The basics” and “Filing a trademark application – Getting Started” explains the application process step by step.

The following is a checklist of information that should be collected before filing a Canadian trademark application:

  1. When you file a trademark application, it is important to decide who the Applicant is going to be. Ask yourself – who is going to be using the mark?  Is the mark going to be used by:
    • an individual ie. Mary Smith
    • a sole proprietor ie. Mary Smith, doing business as, Smith Adventures
    • a partnership ie. Smith Adventures, a partnership
    • a corporation ie. Smith Adventures Inc.
  2. What address should you use?
    • Home address
    • Office address

    If you work from home, it is appropriate to use your home address as the place of business for the trademark application.
     
    If you have an office, use the office address as the place of business.  If you move, it is important to make sure that you write to the Canadian Intellectual Property Office and let them know in order for correspondence to reach you.

  3. What type of a trademark are you filing for? There are two main types of trademarks that can be applied for:
    • Word trademark
    • Logo design

    A word trademark is the most common type of trademark – it is a word or words shown in plain block letters, for example: INFUSE WORKS.
     
    A word trademark affords you the broadest scope of protection.  This type of trademark provides the most flexibility because it is not limited to any particular type font or logo design.
     
    A word trademark application allows you the right to use the mark in any logo design form and you are not required to file a new trademark application, if and when, you update the type font, colour, logo design and/or icon.
     
    The second type of mark is a logo design trademark.  It can consist of a word or words in a particular type font, colour, graphic design and/or icon.
     
    A logo design trademark is limited to the extent that if the logo design undergoes changes or is updated in the future, a new logo design trademark application should be filed to protect the new variation.

  4. Will the trademark be used on goods, services or both?
    • Goods
    • Services
    • Goods and Services

    At the time of filing your trademark application, you must provide a list of the goods that you are planning to produce/manufacture and/or describe the service(s) that you are planning to provide – in ordinary commercial terms.
     
    Sometimes, this is not always easy because the Canadian Trademarks Office likes goods and services to be described in a certain way.  In order to make this task easier, the Office has developed a Goods and Services Manual.
     
    You should refer to this manual and search your particular goods/services prior to filing the application.  This is one of the most important parts of filing a trademark application.
     
    Over 35% of trademark applications experience difficulties during examination because the description of goods/services has not been defined correctly.
     
    Remember you cannot add to your description of goods and services once your trademark application has been filed.  Take the time to really think about all of the goods/services that you are going to use the trademark on in the future.  You always can delete goods and services from the application down the road if you don’t use them.

  5. Will the trademark application be based on proposed use or use in Canada? When the application is filed, you must identify the filing basis.
    • Proposed Use
    • Use in Canada

    Proposed use – means that you have not actually produced/manufactured/sold any products or provided a service at the time of filing the application; however, you intend to do so in the future.
     
    Use in Canada – means that you have produced/manufactured/sold products on which the trademark was displayed at the time of sale or you provided a service that you issued an invoice/bill to a customer.

Determining the date of first use is critical to a successful application.  Many applicants use the date of incorporation as the date of first use of the mark.  This typically is incorrect because it takes several weeks/months to get a business up and running.

You may not produce/manufacture/sell a product or provide a service on the date that you incorporate your company.  As a rule of thumb, always use the date that you first sold a product on which the trademark was displayed or provided a service to a customer and issued an invoice as the date of first use of the trademark.

There also are circumstances where you may have both a proposed use and a use claim in one application.  For example, you manufacture and have sold olive oil for one year and you are expanding the product line to include balsamic vinegars, salt and spices.

The application would include a use claim for the olive oil dating back to the first time the product was sold in Canada, and the application would include a proposed use claim for the balsamic vinegars, salt and spices.

If you consider the five key points outlined in this article, chances are good that your application will be successful (assuming of course that you conducted your trademark searching and the mark is available!).

Any inquiries about any of the information contained in this article can be addressed to Sandra Wright at infuseworks@me.com.

About the Author, Sandra Wright

Sandra Wright

Sandra Wright has operated and owned Intellectual Property firms for over 25 years. She is a specialist in the field of Trademark Law. As a trusted Business Advisor and Strategist to start-ups and existing businesses, she provides a focused and strategic approach to corporate organization and operations, corporate communications and corporate governance.

She assists businesses to identify and implement change that directly affects corporate growth and profitability. Connect with Sandra on LinkedIn here.


4 Common Questions About Trade-Marking Answered

4 Common Questions About Trade-Marking Answered

In my previous article, I talked about the importance and benefits of choosing a creative brand.

This article covers the importance of doing a brand search, whether or not a trade-mark professional can assist you with the search, what’s involved in the registration process and identifying the differences between the ™ and ® symbols.

Should I Search My Brand Before I Use It?

Yes. Once a business brand is chosen, it should be searched.  You can do some preliminary searching yourself.  Begin by doing an Internet search looking for similar marks in similar or related fields.

Then move on to search the domain name registries and any relevant trade directories to ensure a similar mark does not exist.

Should I Use A Trade-Mark Professional?

While most trade-mark databases are accessible to the public and should be searched to locate any identical marks, a trade-mark professional should be contacted to do a full trade-mark and corporate name search in order to provide a complete analysis.

Conducting this type of analysis is highly specialized.  There are many issues that must be considered in order to determine whether a trade-mark is available and registrable.

I often jokingly ask…You wouldn’t operate on yourself… right? So why would you file your own trade-mark application?  The answers that I typically encounter are:

  • “It’s easy”
  • ”I can do it on-line”
  • ”It’s cheaper to do it myself”

While filing a trade-mark application on-line may appear easy, it’s what happens after the mark is filed that can be problematic.

When the mark is examined, the Examiner will review the application to make sure it complies with the applicable sections of the Canadian Trade-Marks Act.  If there are issues, the Examiner will write to you, make you aware of the deficiencies and require you correct them.

This is where it gets tricky.  If you don’t know how to respond properly, you risk negatively impacting your trade-mark rights and possibly losing your mark.

At the end of the day, filing the mark yourself may end up costing you more money because you may have to hire a trade-mark professional to fix the application or possibly even re-file it because the mistake is not fixable.

If the application must be re-filed, you don’t get the government fees back and will have to pay new ones.

What’s The Difference Between The ™ And The ® Symbols?

There are no laws in Canada governing the use of the ™ symbol.  Therefore, you can use this symbol regardless of whether you have an application for registration pending or not.

The ® symbol should only be used if the mark is registered.

How Do I Use These Symbols Properly?

When you use your trade-mark on packaging, labels, website and marketing materials, you should consider displaying the mark as follows:

If the mark is unregistered, use it as follow:

EXAMPLE:              INFUSEWORKS™

Also, include the following statement in small print at the bottom of any printed materials, advertising and website:

INFUSEWORKS is a trade-mark owned by Infuse Works Inc.

If the mark is a registered mark, use it as follows:

EXAMPLE:              INFUSEWORKS®

Also, include the following statement in small print at the bottom of any printed materials, advertising and website:

INFUSEWORKS is a registered trade-mark owned by Infuse Works Inc.

About the Author, Sandra Wright

Sandra Wright

Sandra Wright has operated and owned Intellectual Property firms for over 25 years. She is a specialist in the field of Trademark Law. As a trusted Business Advisor and Strategist to start-ups and existing businesses, she provides a focused and strategic approach to corporate organization and operations, corporate communications and corporate governance.

She assists businesses to identify and implement change that directly affects corporate growth and profitability. Connect with Sandra on LinkedIn here.