How do you feel about having to wait 3.5 to 4 years to be able to prove you own your business name?
We’re guessing you’re a little shocked and a lot disappointed.
This is, unfortunately, how long it takes the typical Canadian small business owner to obtain a trademark registration for their main brand name. From the point of filing a trademark application to getting the certificate of trademark registration that proves they own the name throughout Canada, the average wait is more than 3-years.
This causes a lot of problems for business owners because proof of name ownership is most often needed to stop someone from using the same name, or a very similar one, to confuse customers and the public at large.
In these situations, waiting 12 months is a problem, never mind waiting more than 3 years!
Fortunately, you don’t have to be a business owner who’s sitting defenceless in the face of trademark infringement. We’re going to share a few steps you can take to beat the odds and speed up your trademark registration.
1. File your trademark application using the Pre-Approved List of Goods and Services
When you file your Canadian trademark application, you have to provide a description of the goods and/or services you plan to sell under your trademark. The goods and services must be classified according to the Nice International Classification System for Goods and Services, and they must be described in specific and ordinary commercial terms.
What qualifies as “specific and ordinary commercial terms” has been the source of never-ending debate between Canadian examiners and the Canadian trademark agents who file trademark applications. Trademark agents (and their clients) want as broad of trademark protection as possible, which could be achieved, at least in part, with less specific descriptions of goods and services.
For example, an e-commerce seller would much rather have a trademark registration for all “online retail services,” than a registration that only covers “online retail services featuring pet products”.
However, trademark examiners want applicants to narrow the description of goods and services as much as possible. This better enables them to search for potentially confusing prior registered or pending marks, and clearly defined trademarks also make it easier for the public to be able to determine the availability of a name for trademark registration and use.
Approximately 80% of all trademark applications receive objections to the descriptions of goods and services, and this is a major cause of delay in the entire registration system.
The Canadian Trademarks Office has published a Pre-Approved List of Goods and Services. These are descriptions that have been previously examined and determined to comply with Canadian rules for trademark applications.
If you can describe all your goods and services using this list, you can shave almost 2-years off the wait for your Canadian trademark registration. If you can’t fit all your goods and services within the pre-approved list, you can still use that list as a guide to describe your specific goods and services in compliance with Canadian rules.
If you feel daunted by the prospect of trying to classify and describe your goods and services, consider using Markably® to prepare and file your Canadian trademark application. Our easy-to-use platform translates your goods and services into acceptable descriptions so that you’ll get a faster Canadian trademark registration.
2. Ensure your name is a registrable Canadian trademark
How would you feel if after waiting 3.5 years for the Trademarks Office to look at your trademark application, they refuse it because of an earlier confusing trademark?
You can avoid this and other registrability disappointments by conducting your due diligence before filing your trademark application.
Canadian trademark registration is a government grant of the exclusive right to use a name throughout all of Canada. It’s a pretty powerful legal tool, and so there are minimum standards that your name must meet before the government will grant you this exclusivity.
The two most common reasons the government refuses trademarks are because of confusion with an earlier trademark and because the mark is descriptive or generic. You may be able to argue against both of these objections, but it will lead to serious delays in obtaining your trademark registration (if you can obtain one at all).
Conduct your own searches of the Canadian Trademarks Register before you file your trademark application. This will save you months of potential delays, and even possible complete refusal of your application.
If you’re not confident searching, consider using Markably®. Our trademark registration service includes a lawyer-conducted search of the Canadian trademarks register and advice about the registrability of your trademark.
3.Request expedited examination of your application
If your trademark meets all registrability criteria and your application contains a description of goods and services that complies with Canadian rules, but your application is still not moving fast enough to meet your needs, you can ask the Trademarks Office to expedite the examination.
There are specific circumstances that may warrant expedited examination of a trademark application. The most common one we see is in the case of online trademark infringement and a brand owner is at risk of being severely disadvantaged on online marketplaces. In such cases, the online marketplace typically requires the brand owner to provide a trademark registration proving they are the owner of the infringed trademark.
A request for expedited examination must be accompanied by an affidavit or statutory declaration setting out the specific circumstances that require a faster trademark registration. Affidavits and statutory declarations are legal documents that must be notarized or signed in front of a commissioner of oaths, so it’s best to engage the help of a trademark lawyer.
If you think your brand is at risk in an online marketplace, contact our Canadian trademark lawyers at Mason PC Trademarks for a free consult on whether you could qualify for expedited examination.