TRADEMARK LAW 101 Part 5- TM BASICS FOR BUSINESS OWNERS
Updated: Dec 1, 2022
What is the trademark registration process?
Pre-application Search: The first step of any branding strategy, and certainly before filing a trademark registration application, should always include a comprehensive search for similar trademarks being used with similar or overlapping goods and services.
This leads to the question of whether searching for the availability of the domain name or a search of the trademark office online database is enough?
The short answer is probably no. Searching for other marks requires not only looking for exact matches but also marks that are similar visually, phonetically, and in commercial impression. This requires some legal analysis with respect to how the courts interpret “commercial impression”.
Also, if you have an online business a search is needed for every country that you sell into. This is because trademark law (and protection) is national in scope. In many countries the act of selling to a resident of that country is considered use of the trademark. Therefore, you might be infringing on a trademark owner’s rights in another country without knowing it, but the consequences could be your website being blocked in that country by way of a court order.
Filing of Application: Once your trademark has been cleared through the search process then the next step is to file a trademark application and pay the applicable filing fees to the governmental department responsible for the trademark register. In Canada this is the Canadian Intellectual Property Office (CIPO), and in the US this is the United States Patent and Trademark Office (USPTO).
Assigned to Examiner: After several months the application is assigned to an examiner who will review the application to determine if the application complies with all technical requirements. After that, then the examiner conducts a search of the trademark register to determine if there are any conflicting registered marks or application in the queue.
Office Actions: If any issues are raised by the examiner, an office action letter will be sent to the applicant (or the trademark agent/attorney) with an opportunity to respond to the issues raised.
Failure to respond to an office action can eventually result in the application being deemed abandoned.
Publication for Opposition: If and when all issues are resolved, then the application will proceed to publication for opposition. The publishing of the mark provides any third party the opportunity to oppose the trademark application. Typically, this would happen if another owner of a mark believed the trademark was similar to their mark in a way that could cause confusion with consumers of the goods or services associated with the mark.
Registration: If no opposition is made to the application, then a notice of allowance will be issued which means that the trademark has been approved for registration. This last stage is dealt with differently between the US and Canada. In the US, a specimen of use is required to show how the trademark is actually being used in connection with the listed goods and services before registration is obtained. In Canada there is no requirement to prove use of the trademark to obtain registration, however there is a registration fee that must be paid within 6 months of the notice of allowance being issued.
The length of time to receive registration varies widely depending on how many issues are raised by the examiner, and if any third party opposes the application. In best case scenarios, if no issues arise with the application, it typically takes anywhere from 1 – 2 years depending on whether it is a Canadian or US application. But, the filing date is a far more important date than the registration date. For this reason, it is critical to file for trademark registration as early as possible.
For assistance with your trademark registration contact us to schedule a consultation with our trademark lawyer.
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