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How to Register a Trademark in Canada

May 26, 2021

Your name and logo are the primary symbols the public uses to locate your products and services in the marketplace. This makes your name and logo the most valuable assets your business owns. The best way to claim a name and logo as your exclusive property is by registering them as trademarks.

In Canada, trademarks are registered with the Canadian Intellectual Property Office (CIPO). Unlike other business registrations in Canada, trademark registrations can take a long time to obtain. Trademark applications undergo rigorous examination for compliance with trademark laws, and due to a severe backlog in examination, the registration process takes between 2 to 3 years.

Given the lengthy wait for CIPO to approve your trademark, you should ensure that the mark is available for your use and registration before you file your application or start using the trademark. If you’re unsure if your mark is available, consult with a trademark lawyer who can provide you with a trademark search and availability opinion.

Your trademark application must describe the trademark, who will own it, and how it will be used in Canada. If the application doesn’t correctly set out all these elements, CIPO will object and your application will be delayed even further or, worse, refused all together.

The elements required in a trademark application are set out below.

1. Applicant

This is who will own the trademark, and there can be only one applicant. If your business is incorporated, the corporation should be the owner. If you are operating your business as a sole proprietor, you should be named as the applicant. If you later incorporate your business, you can assign your trademark to the corporation.

You must also provide a main business address where the trademark owner can be reached. Failing to provide a valid mailing address could result in you missing important correspondence regarding your trademark.

2. Trademark

Your application must include the trademark and identify the type of trademark that it is. There are many different types of trademarks, but names, logos and taglines are the most common. Name and tagline trademarks are word marks and logos are design marks.

Once your application has been filed, it’s not possible to make any significant changes to your trademark, so ensure you’ve committed to the trademark and that it is available for your use before you file your trademark application.

3. Goods and Services

Your trademark application must contain a list of the goods and/or services that you plan to sell in connection with your trademark. A good is a tangible or downloadable item that is delivered to a purchaser. Your trademark should be on the product or its packaging when it is received by the customer. A service is an activity that you do for the benefit of a purchaser. Your trademark should be displayed during the performance or the advertising of the service.

Your goods and services must be described in specific and ordinary commercial terms, and each one must be classified according to the Nice Classification System. The Nice Classification system groups goods and services into 45 classes. Claiming the correct classes is important for the purposes of paying the correct government fees and to enable the CIPO examiner to properly search and index your trademark.

If you are unsure how to describe and classify your goods and services, consult with a trademark lawyer or use our DIY trademark registration tool to prepare and file your application. It is designed to describe and classify goods and services in compliance with Canadian trademark laws.

4. Filing Fee

When your trademark application is filed, you must pay a government registration fee. The fees required depend on the number of classes of goods and services claimed in your trademark application. The fees for the first class are $336.60 and each additional class costs $102. For example, a trademark application that claims clothing, handbags and cosmetics covers 3 classes, and the total government fees due will be $540.60. These fees are non-refundable, even if your trademark application is rejected.

When you file your trademark application with CIPO, you will immediately receive an application serial number and official filing date. This application then enters the queue to be examined. The wait for examination is about 2-years. If you have conducted a comprehensive trademark search prior to filing your application, it should be safe to use your trademark as planned while you wait for your application to be examined.

In examination, a CIPO examiner will review your application to ensure that it contains all the items described above and that your trademark meets Canadian registrability criteria. If there are objections, they will be set out in an official letter and there will be a 6-month deadline for you to respond to those objections. Failure to respond within the deadline can result in the abandonment of your application.

Once the application complies with Canadian laws, it is approved and then advertised in the Trademarks Journal for any public objections. Any person who believes your mark should not be registered has 2-months during which they can file a Statement of Opposition setting out their reasons for objection. If this happens, your application will enter an opposition proceeding, which can take another 3 to 4 years to complete.

If no oppositions are filed, your application will be allowed and formally registered as a Canadian trademark. The registration is valid for 10-years and can be renewed for successive 10-year terms. This registration is the most powerful tool at your disposal to stop infringers from confusing the public by using similar trademarks. If you would like help registering your company’s trademarks, schedule a free consult with one of our trademark lawyers today.

What’s your Trademark?

January 13, 2021

Everyone has something special about them. That one thing that people notice the minute they meet you.

For me, its my wild curly hair. Love it or hate it, it’s easy to pick my head out of a crowd!

Every business has something special about them too. That one thing that consumers notice and, hopefully, remember.

That’s your trademark.

I could go on for pages and pages about how to create a memorable trademark. But that’s not the point of this post. We’ve written about that previously, and you can read all about it here.

Today, in honour of the fresh new year, I’m going back to the basics of what is a trademark. Hopefully, this will help you identify the trademarks your business uses, so that you can take the necessary steps to protect them for your exclusive use well into the future.

If you’d like to skip reading this post, book a free consult with our trademark lawyer and send us your website URL and any other marketing materials or plans, and we’ll tell you what trademarks you’re using.

What is a Trademark?

The trademark definition is “a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others”.

Lawyers are fun, aren’t they?

In plain-speak, this basically means that your trademark can be anything that you use to set your products or services apart from everyone else’s.

To be capable of differentiating the trademark must be unique. It can’t be similar to someone else’s (do a trademark search to confirm), and it can’t be descriptive or generic.

Within these boundaries, there are three main types of trademarks that most businesses, big or small, consistently use. They are names, logos and taglines, and we’ve discussed each type below so that you can identify which apply to your business. If you’re in the pre-launch stage of your business, you can create a brand structure around what’s common and easiest to protect.

Name Trademarks

You have a name. Your business has a name. Sometimes, your products and services have special names. These names most likely consist of a word or combination of words.

A business name is the name under which a business is operated. If your business is incorporated, the name will have a corporate identifier such as Limited (Ltd.), Incorporated (Inc.), Company or Corporation (Corp.), and it will be on a federal or provincial registry of business names.

Business names aren’t always trademarks, but they can be if they are also used to differentiate products or services. This tends to be more common in service-based businesses, but many product sellers follow this strategy too.

When a business name is also a trademark, it is used to identify the source of products or services. This typically means that the name is on product packaging, signage and advertising. The trademark version of a business name tends to drop the corporate identifier, because it’s easier for consumers to say and to remember. Consider the following examples:

Business Name	Trademark
Home Depot International Inc.	Home Depot
Lululemon Athletica Inc.	Lululemon Athletica
Kashi Company	Kashi

Unique and non-descriptive product and service names are also trademarks because they differentiate those products and services from competitors. Adopting a unique product or service name that is different from the source’s business name is not that common for businesses just starting out. Startups tend to use their business name, or a close variation of it, as a trademark for products and services because its easier and less expensive for marketing. But as the business grows and product or service offerings start to multiply, a common strategy is to develop new and unique names for those products and services. Consider the following examples of product or service names that are different from the business name of the source:

Business Name	Product Trademark
Kellogg Company	Special K
Apple Inc.	iPhone
Insurgent Brands, LLC	RXBAR

Other types of names that are also trademarks include podcast names, event and show names, and course or program names. Irrespective of what the name is attached to so long as it is used to differentiate the source of the product or service from competitors, it is a trademark and should be protected for your exclusive use.

Logo Trademarks

Your logo is a trademark. In fact, logos are what most people associate with the term “trademark”, because its what you normally see on packaging and advertising. Let’s face it, marketing would be boring and unremarkable if trademarks were only ever depicted as words in standard case lettering with no distinct style.

There are different types of logos that function as trademarks. One is the stylized illustration of a name, and the other is a design or illustration without any words. There can also be combinations of these two types. Consider the following examples:

The distinction between these types of logos is important when devising a trademark registration strategy. A business’ first priority for registration should always be their name trademarks, and these are typically registered in standard uppercase lettering (as a “word mark” in lawyer-speak). A word mark registration will protect a name in any stylized format. So, if your logo consists of just fancy lettering, like the first Instagram logo above, a word mark registration would be enough to protect it.

However, a word mark registration would not protect separate design elements, such as the smile design in the first Amazon logo above. In that case, a word mark registration would protect the word Amazon, and we would recommend a second registration to protect the smile design. While you could certainly just register the composite logo that consists of the stylized word plus the design, there are limitations to this approach. First, such a registration wouldn’t protect your use of the components separately.

More importantly, separate registrations for words and designs will each provide a broader scope of registered protection for the brand. A trademark registration grants the owner the right to the exclusive use of the mark that is registered. This right is extended to enable the owner of a registered trademark to stop the use of marks that are also confusingly similar. These are marks that are not necessarily identical to the registered trademark, but that are similar in appearance, sounds or suggested ideas and are used in association with related goods or services. The fewer components you have in your trademark registration, the fewer points of distinction an infringer can argue differentiates its mark from your registered trademark.

The best trademark registration strategy for a new business is to register its name as a word mark and register its logo as a second trademark.

Tagline Trademarks

A tagline is a catchy (read: memorable!) phrase or slogan that is typically used in advertising to explain what your company does or the benefit that its products or services provide. There are many great tagline examples, such as “Just do It”, “You’re Richer than you Think”, “The Quicker Picker Upper” and “Betcha Can’t Eat Just One.”

A tagline can become a really well-known identifier for a company and its products and services, but they can have some challenges in terms of trademark protection. The most common challenge is descriptiveness. Trademarks that are obviously descriptive of a feature, trait or characteristic, or intended result from using a product or service are generally not registrable as trademarks, which means they’re not meant for exclusive use. So keep this in mind as you contemplate creating a tagline for your business. You won’t be able to stop others from using your tagline if it is clearly descriptive of what you sell.

Another common challenge with respect to protecting a tagline as a trademark is caused by how it tends to be used. Under the Canada Trade marks Act, a trademark must be used within certain parameters to qualify for protection. For products, a trademark must be on the product, its packaging, or closely associated with the product at the time the purchaser takes possession of it. Displaying a tagline on an ecommerce website would, therefore, not qualify as “use” of a trademark in association with the products being sold. The tagline must also appear on packaging or prominently displayed in a location that would be noticed by purchasers when they receive their purchased product.

The parameters for trademark “use” in relation to services is broader than it is for products, and this makes it easier to satisfy the use requirement in relation to tagline trademarks. Under Canadian law, a trademark only needs to be used or displayed in the performance or advertising of services for there to be protectable trademark use. Having a tagline appear on the website for your service-based business would qualify a trademark use, thus enabling you to protect it for your exclusive use.

These are the most common types of trademarks that businesses use to distinguish their products and services from their competitors, and each of these types of trademarks should be protected by a trademark registration. I could write pages more about why its better to register a trademark in Canada instead of using an unregistered trademark (and our next post will be dedicated to that very subject). But for now, I just want you to think about the trademarks your business uses. We can then look at how to best protect them.

If you’d like some help identifying your trademarks, book a free consult with our trademark lawyer. We’ll review your website and any other marketing materials or plans and give you your list of trademarks to protect.

Expert tips on choosing a unique trademark that your audience will remember

November 17, 2020

Trademarks represent your business identity. It’s your badge of origin.

Whether it’s your text, your logo, a symbol, or design (or any combination of signs) used to identify your business as the source of certain goods or services, your trademark is your brand. It becomes what people remember.

A trademark doesn’t just distinguish your business from its competitors, it also prevents them using your identity. This is why choosing the name or logo for your business is so important.

Understanding what makes a strong trademark versus a weak one will make the whole process of choosing and registering a trademark a lot less challenging (and a lot less costly down the line).

Here’s how to pick a great mark and stand out from your competitors:

1. Recognize the opportunity to create brand value

A great trademark creates brand recognition. This happens when your customers begin to associate your trademark with the quality and authenticity of the products and services only you provide. They see your company as the source of these products and services (not your competitors). The strength of this trademark and how your customers begin to recognize and associate with it becomes valuable property.

But developing a brand requires careful thought and insight. Don’t stint on the legwork. Take time to brainstorm unique trademarks that your consumer will remember. Trademarks that are unique enjoy wider protection under the Canadian Trademarks Act and common law as it is different from all the others (and not likely to cause consumer confusion!).

A unique trademark will allow your business to stand out in the marketplace.

2. Choose the strongest trademark you can

Trademarks fall on a sliding scale from very strong (fanciful, arbitrary and suggestive) to very weak (descriptive or generic). By outlining the differences between these categories, we’ve made it easy for you to develop a trademark that falls on the stronger side of the scale.

2.1 Fanciful

Fanciful trademarks are completely made up. As they’ve never existed before, they’re considered inherently unique and distinctive. Often, there is no underlying meaning or logic behind a fanciful trademark. Sometimes, they are just combinations of words or portions of other words.

Some examples include KODAK for film, GOOGLE for online services, XEROX for copiers and CLOROX for bleach. You would never have known these names before they were created and used by their respective brand owners (and marketed so effectively that they now achieve instant brand recognition).

Fanciful trademarks usually get the strongest form of protection and are often the easiest to register.

The downside is that they are more difficult to come up with and may require extensive marketing before they catch on. For example, a consumer might not immediately understand what the associated product or service is or whether they need it.

So, a fanciful trademark will usually take more time, energy, and resources to market before you get brand and product recognition. The upside is that when you eventually do build up brand recognition in the market for your product or service, you’ve acquired goodwill and reputation in a strong trademark that could stand the test of time.

2.2 Arbitrary

The arbitrary trademark is the second strongest type of trademark. Arbitrary trademarks are composed of words that have a commonly understood meaning. The twist to these trademarks is that these words are used in a way not logically connected to the product or service being offered.

A powerful example of an arbitrary trademark is APPLE computers. The word “apple” exists to describe the fruit, but it has no logical connection to computers. However, it is widely recognized in the market and has a loyal following of consumers who love and identify with the brand. Other examples include CAMEL for cigarettes and AMAZON for retail services.

Because arbitrary trademarks are composed of words that consumers associate with other things (due to their dictionary meaning), some level of consumer education and marketing may be needed to build the link between the brand and the products or services offered. But, like fanciful trademarks, they usually receive extensive trademark protection and allow strong source identification.

2.3 Suggestive

Of the three types of strong trademarks, suggestive marks cruise at third. These trademarks usually hint at the products or services offered, but don’t describe them. They suggest characteristics or traits of the goods or services without specifying them outright.

Examples of suggestive trademarks include AIRBUS for airplanes, TIDE for laundry detergent and NETFLIX for online streaming. Some brand owners are drawn to suggestive trademarks because this type of trademark requires less consumer education than fanciful or arbitrary trademarks. They usually possess inherent sales appeal and, when marketed well, tend to stick.

One disadvantage to a suggestive trademark is that they get less extensive trademark protection than fanciful or arbitrary trademarks. This is because another trader might be using the same or a similar trademark in a manner that suggests the same or similar goods. This can be very confusing for consumers (and costly litigation may be required to establish trademark rights).

3. Avoid the weaker trademarks

On the weaker end of the scale are generic marks and descriptive trademarks.

3.1 Descriptive

Descriptive trademarks are usually composed of a word or words that describe the product or services they represent. These trademarks immediately convey something about a quality, feature, function or characteristic of the goods or services offered by a business (and are not distinctive). Examples of descriptive trademarks include COLD AND CREAMY for ice-cream, FISH-FRI (when the mark was first introduced) for batter mix, TRIM for fingernail clippers and PARK N’ FLY (when the mark was first introduced) for airport parking services.

Descriptive trademarks are very difficult (if not virtually impossible) to register. They receive very little protection at all under trademark law and don’t do much as an identifier of source in the marketplace. It’s worth noting that although a trademark may be inherently descriptive, it may (over time, and through extensive use) acquire some distinctiveness and start functioning as a distinctive trademark. This happens when the original or primary meaning of the descriptive words used to describe the product or service become exclusively associated with a particular business.

Examples of trademarks that have acquired distinctiveness include SHARP for televisions and WINDOWS for windowing software. In many cases, the courts have ruled that for trademarks made up entirely of non-distinctive words, small tweaks and differences (such as unique suffixes) may be considered enough to distinguish them from other trademarks. It can, however, be extremely difficult to stop competitors from using similar and potentially confusing trademarks for competing goods and services.

Rather avoid legal pitfalls and choose a stronger trademark from the outset.

3.2 Generic

A term or word is generic if the public uses that term to generally refer to a product or service. They are often common names (or nouns) of the product or service. Generic terms are, by nature, incapable of indicating a product’s source or origin.

Examples of generic terms would include SHREDDED WHEAT for breakfast cereal, LIGHT or LITE for beer, CLOCK for timepieces or LIGHT for lighting fixtures. These terms are never granted registration or protection under trademark law.

4. Think about the impact of your trademarks, long-term.

When developing a brand, it’s crucial to keep the stronger and weaker trademarks classifications in mind. The general rule of thumb to remember is that a trademark’s purpose is to identify the source or origin of a product or service; it’s not to identify the products or services themselves.

Your goal is to choose a fanciful, arbitrary, or even a suggestive trademark that is unique to you in the marketplace. For the strongest trademark rights, aim for a mark that is fanciful or arbitrary. If you are more concerned with the trademark’s ability to communicate information about your goods or services to the consumer, then a suggestive trademark can be a reasonable compromise. Steer clear from marks that are descriptive or generic.

From a cost perspective, there is often a bias towards descriptive trademarks. These describe a product or service, so consumers don’t need to be educated on what it is you’re selling (reducing the size of your marketing budget). However, it’s important to be aware that although you may save money and energy on the front-end, you may find even more significant costs on the back-end due to costly litigation or cease and desist letters.

Ultimately, you should consider this spectrum carefully before choosing your mark. The strength of a trademark is related to its identification in the market. The stronger it is, the easier it is to register and protect (and the more memorable and lasting it becomes).

If you’d like to ensure the trademark you select is legally enforceable, send me an email. I’m here to help.

A cautionary tale: Why you need to register your trademark, yesterday! Brian’s Story Part 2

November 4, 2020

In my last article, I talked about Brian’s trademark dilemma and what can happen when you don’t register your trademark.

If you missed it, you can read it here.

Now let’s dive a little further into what Brian can still do to enforce his unregistered trademark.

Is all hope lost for Brian….? Read on to see…

The legal process and costs of Brian’s case:

To give you an idea of what’s involved with enforcing an unregistered trademark in Canada and the United States, I’ve summarized the steps and costs Brian’s faced in this case.

Step 1: Send a cease and desist letter threatening proceedings and a claim for damages

As the owner of an unregistered trademark, Brian still has enforceable legal rights and, even though it will be expensive, he’s got a really good case for trademark infringement and passing off. The cease and desist letter will serve as a warning to the infringer that if they proceed with their trademark applications and continue to use the infringing mark, it is going to lead to a costly legal action and virtually no chance of trademark registration. Brian could get lucky and the cease and desist letter may cause the infringer to consider immediately changing their mark to avoid wasting any further investment.

In terms of costs, a cease and desist letter usually costs about $1000 to $1500.

Step 2: File oppositions

If the infringer doesn’t withdraw its applications, Brian will have to oppose to stop the applications from going through to registration. A trademark registration is a legal right to use a trademark. Brian cannot let the infringer gain this right, because it affects Brian’s ability to use and enforce his own trademark rights. All of Brian’s hard work and reputation built over the past five years will be in jeopardy.

The cost of filing an opposition in Canada is about $2000. The cost in the United States is about $5000. But filing an opposition just starts the opposition process. Brian will also have to provide evidence of sales and advertising to prove when he first started using his trademark and that he has built a strong reputation, and he’ll have to submit arguments explaining why the infringer should not be entitled to register its trademark. In Canada, total costs of opposition run around $25,000 to $50,000, and in the United States, it’s even more. All of these costs could have been avoided if Brian had registered his trademark first.

Step 3: Obtain permanent injunctions from the Courts in both countries

Opposing the infringer’s trademark applications will only affect the registration of the marks in Canada and the US; the oppositions have no legal impact on the infringer continuing to sell dollhouses using Brian’s trademark. Brian will still have to obtain permanent injunctions ordering the infringer to stop using the mark and to pay Brian damages for the infringement. These proceedings are separate from the oppositions but they should be started around the same time, because oppositions and infringement and passing off actions can take several years to resolve. If you thought the opposition procedure was expensive, your jaw will drop at the price tag of a trademark infringement suit before a Canadian or US court.

If Brian had registered his trademark in both Canada and the United States, he might still have to sue the infringer for trademark infringement and passing off. Unfortunately, trademark registrations don’t just magically stop infringers; they’re just legal tools that make bringing these claims much easier. For example, when enforcing an unregistered trademark, you’ll have to prove your rights in that mark through evidence of sales and advertising. A trademark registration is itself proof of ownership. Also in the confusion analysis with an unregistered trademark, a court will look at how you have used that mark in the past to determine whether the infringer’s use is likely to cause confusion. With respect to a registered trademark, the court will look at whether the infringer’s activities fall under the scope of the registration, regardless of how the registered trademark owner has used the mark in the past.

By now, you’re probably astounded at Brian’s spiraling expenses and the amount of time it will take for Brian to stop the infringer from damaging his brand.

So, is no move the best move for Brian?

Brian doesn’t have to proceed with the oppositions or any actions for infringement or passing off. However, if Brian allows the infringer to continue using the trademark that he built a solid reputation for over the last 5 years, it will become non-distinctive of his company very quickly.

The infringer is a large, established company that probably has the resources to reach a wide market for the promotion and distribution of their dollhouses under his mark. Further, Brian may as well abandon his plans to develop and sell his own brand of toys and games, as the infringer would be able to claim infringement of their registered trademark.

Does Brian have any other options?

Brian could look at rebranding his store and any future products. He’ll have to be very careful and strategic in transitioning his existing brand to a new one to minimize the loss of customers and goodwill.

In view of what can happen when you don’t take steps to register your trademark, we would of course recommend that Brian file Canadian and US applications as soon as he has settled upon something new.

Lessons learned from Brian:

If Brain’s case study leaves you with one message, let it be this:

Register your trademark today. Trademark registrations are powerful tools for enforcing trademark rights and for saving on legal fees that can be better spent on growing your business.

A cautionary tale: Why you need to register your trademark, yesterday! Brian’s Story Part 1

October 28, 2020

Do you have a small business where day-to-day operations take up so much time and energy that registering your trademark is low on your list of priorities? Or maybe you think it’s not worth the cost or the hassle.

Most business owners don’t realize how important a trademark registration is, until it’s too late.

A case that I advised on recently illustrates how registering a trademark can save you thousands of dollars in legal costs of proving and enforcing your rights over an infringer. It’s a cautionary tale for not registering your trademark.

**The story of Brian* and his unregistered trademark**

Brian came to me to find out his rights after he discovered another company had started using his trademark.

Brian had a great trademark. The name was unique, it had no descriptive meaning in relation to his business, and it spoke directly to his target customers. Brian had been using this trademark since 2014 as the name of an online retail store specializing in high-end toys and games. He had sold to thousands of Canadian and US customers over the years and had built a solid reputation and profitable business. He was even developing his own series of educational games that he planned to sell under his trademark.

Unfortunately, Brian never registered his trademark. He was busy growing his customer base, and he didn’t see the value since he had a registered business name and had secured the domain name for his trademark.

The infringer, an American company, recently adopted his exact trademark for their dollhouses, which were mass-produced and sold in several large discount retail stores.

Worse, the infringer filed both Canadian and US applications to register Brian’s exact trademark to cover a range of toys and games for kids.

Needless to say, Brian was angry and upset.

So, what rights does Brian have?

Brian does have options to stop the infringer, but unfortunately, they aren’t fast, easy or inexpensive.

There’s clearly a potential for confusion to occur between Brian’s trademark and the infringer’s mark. Brian’s trademark is distinctive, and having been in use for more than 5 years, it has built a solid reputation. More importantly, Brian’s and the infringer’s marks are in the same space, which increases the likelihood that the same consumers will see both and believe that the associated toys and retail services are related.

A likelihood or risk of confusion is needed to establish legal claims of trademark infringement and passing-off, as well as to oppose a trademark application. Trademark infringement and passing-off claims are made before a court, and a trademark opposition is filed before the Trademarks Office. These are the main legal actions that are available to stop a copycat from using and registering your trademark, and they are available to unregistered trademark owners.

The downside to this legal battle?

The biggest downside of any trademark dispute is the legal fees. As we spoke about in our David vs. Goliath parable, a small business trying to establish ownership rights of an unregistered trademark will have to fight a costly battle with the infringer, who might have significantly more resources at their disposal.

Even worse, trademark rights are country-specific. Taking action in one country isn’t going to stop the infringer in other countries. In Brian’s case, the infringer had filed trademark applications in both the US and Canada and they are selling their dollhouses in both countries, so Brian will have to prove his earlier rights in separate US and Candadian court and opposition proceedings, and this significantly increases his legal costs.

Words to the wise:

The costs shouldn’t deter anyone from enforcing their trademark rights, but it should prompt you into registering your trademark before you’re in this exact situation! A trademark registration will significantly cut down on your enforcement costs (read on to find out exactly how much you can save).

And you should file your trademark application as soon as possible, because it currently takes 2.5-3 years to get a registration in Canada and about 12-18 months in the United States. A straightforward Canadian trademark registration costs about $1500 and a US registration costs around $2500. There’s also the reMarkably easy and affordable DIY registration option.

While registration costs might seem high if you’re just starting up, if you don’t have a registered trademark and the onus is on you to prove your ownership of it, the costs are small in comparison to what they could be!

Trademark registrations would have saved Brian a lot of money

If Brian had registered his trademark in Canada and the US, these registrations would have been raised by each Trademarks Office as obstacles to the infringer’s trademark applications. Brian never would have had to oppose the infringer’s marks. The Canadian and US trademark offices would have done some of the enforcement work on Brian’s behalf!

But it’s too late for Brian to register his trademark now. Since the infringer filed its applications before Brian, they will be obstacles to any application Brian files. He won’t be able to get a registration in either country until he has the infringer’s applications removed.

Stay tuned for PART 2 of Brian’s story…

*Name changed

The first step to registering your trademark

October 26, 2020

Where do you start with small business brand protection?

The first step to protecting a brand online using a trademark is the pre-filing search.

This step is not mandatory, but could end up saving you a lot of time and money. It identifies any obstacles that are likely to be raised in examination or opposition.

The focus needs to be on using the correct search terms and fields.

A lawyer can help you. You could also try to figure out on your own with the Canadian Intellectual Property Office.

Or, if you are the kind of brand that prefers to use technology when available, may we introduce you to Markably?

Markably is complete legal technology that helps you register, monitor and enforce your brand assets. Intellectual property is the equivalent of real estate in 2020. Make sure you’re protecting it.

When you sign up with Markably, we do the pre filing step for you! And so much more.

Explore the system here.