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Defining “Trademark”

Much can constitute a trademark. A trademark can be a word, a symbol, a design, or any combination of a word, symbol and design. A trademark must be used in association with your goods or services, and can constitute valuable intellectual property.

 

Why Register Your Trademark

While registering your trademark is not obligatory, it is highly recommended. Registering your trademark stands as proof of ownership, and is the main way of protecting your trademark, and its attached exclusive rights. Important to note is that registering a trademark in Canada protects rights in that trademark in Canada only. If you are selling goods or services in another country, registering your trademark in each respective country is advised.

 

In Canada, the registration process takes approximately 10 to 18 months. The process may last longer if there is opposition to your trademark. Registration of a trademark consists of having your trademark entered on the Trademarks Register of the Trademarks Office of the Canadian Intellectual Property Office of Industry Canada. Registered trademarks are valid for 15 years in Canada, and can be renewed every 15 years thereafter.

 

Can You Trademark Your Own Name?

Canadian trademark regulations do not prohibit you from trademarking your own name. However, there is evidence to support that this level of protection may only be granted to names that are widely used in commerce, or are unique. For a name to be widely used in commerce means that the name should already be well-established. Indeed, a primary reason for granting trademarks is to protect established brands from inferior competition. As it pertains to unique names, it would be far more difficult to trademark a common name. A registered business name can help secure the business owner’s right to a trademark while also demonstrating commercial use of the name (read: “John Smith Designs” would be more likely to be approved than “John Smith”). This suggestion may increase your chances of having your name in a trademark.

 

What to Consider Before Filing an Application

Whether you decide to go forth in attempting to trademark your name, or simply including your name in a trademark, it may be helpful to consider the following:

 

  • Search the Canadian Trademarks Database à this will help you identify if a similar trademark exists, and if your trademark could be confused with someone else’s.
  • Search trade names à while there is no complete list of trade names in Canada, it is important to note that trade names are often used as trademarks – even if they are not registered trademarks.
  • Consider seeking legal assistance à preparing and following through on your trademark application is a complex process. A lawyer can help with the two aforementioned bullet points, and with the relevant content below.

 

Canadian Trademark Application Process

The Canadian Trademark Application Process consists of 6 main steps, enumerated below:

 

  1. Application: requires filing an application with the trademark office, together with a non-refundable fee of $250.00 for each trademark you are applying for.
  2. Initial examination: during the following months, the trademarks office examines then carries out a search of existing trademark records.
  3. Approval: once past the initial determination of registerability, the trademark office will submit your trademark for advertisement.
  4. Advertisement: the relevant trademark information is published in trademark journals. Any interested party may make representation to the trademarks office, including filing opposition against the registration of your trademark.
  5. Allowance: if the trademark office receives no objection within approximately 2 months of publication in the trademark journals, a notice of allowance is issued.
  6. Registration: a final fee of $200.00 must be paid to the trademark office within 6 months of the date of the allowance. Upon receipt of the registration fees, the trademark office will issue a certificate of registration for each registered trademark.

 

In Conclusion

The benefits of registering a trademark are manifold and include: protecting your company’s name or logo, granting you exclusive nationwide ownership of the trademark, and decreasing the likelihood of another party claiming that your trademark infringes upon their trademark. While it may be difficult to trademark your name, it is not impossible. Further, you may be able to include your name in your trademark. Seeking legal assistance may help in both navigating complex trademark rules and regulations, and ensuring you receive maximal protections and benefits from the filing of your trademark.

 

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As with all Fashion By Law Posts, this information does not constitute legal advice. For legal inquiries, please contact info@fashionbylaw.com.

 

Information gathered from:

http://www.ic.gc.ca/eic/site/cipointernetinternetopic.nsf/eng/h_wr02360.html#whatToConsider

http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03584.html

http://www.registeringatrademark.com/trademark-benefits.shtml

https://www.corporationcentre.ca/docen/ptm/home.asp

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