Intellectual property is the lifeblood of most businesses. If you don’t register your trademarks, you leave yourself vulnerable. Other businesses can use the words, phrases and images that your clients and customers associate with your products and services. They take advantage of the hard work that you put into your branding, and can even damage your reputation if they provide inferior products and services. What is your plan if you start seeing negative online reviews about your business from someone else’s unhappy customers? This happens all the time when those customers can’t tell you apart from other businesses with similar names. Make sure that when you send that cease and desist letter it includes details about your registered trademark and the consequences of infringement.
Trademarks are registered country-by-country. Thoughtwick can assist with trademarks for Canada and the United States of America.
Have trademarks to file?
We can provide a free assessment and preliminary search. All we need is the trademark and the main goods/services with which it will be associated. We cannot provide legal advice or guarantee registrability, but can let you know about general issues and can identify any immediate conflicts that would likely prevent registration. Any information you provide in this way is strictly confidential and will not be shared with any third parties for any reason.
Trademark Application Status Descriptions
Important Dates (Response Deadlines)
What Kinds of Trademarks Can Be Registered?
Trademark Application Status Descriptions:
Formalized – This means that the government has entered your application data into the system, and it is waiting in the examination queue. They are currently taking 14-16 months to review applications, though some outliers are receiving their reports much more quickly than this.
Searched – A trademark examiner has been assigned to your file and has issued a report. It is usually necessary to produce a response or file a revised application to deal with the examiner’s concerns. Some applications that say “Searched” have actually been approved, but the status hasn’t updated yet. If you have an examiner letter and you’d like a free assessment, feel free to email a copy to me and I will have a look. I will also provide a quote for preparing the response or a revised application, as needed.
Approved – Congratulations! The examiner was satisfied that your application is registrable and has moved you on to the next stage of the process. Your application will be published in the CIPO Trademarks Journal for two months for public review. There is nothing for you to do for now.
Advertised – The application is currently published in the CIPO Trademarks Journal. Publication lasts for two months with a bit of extra time for administrative action at the end of that. If your mark is not opposed during that time, the CIPO will send your Notice of Allowance and it will be time to finalize your application. At that point, there will be a $200 government fee, and some applications with proposed uses also need to file a Declaration of Use form. If you would like assistance with this, let me know. I can charge you a service fee to complete this for you online using my company’s account and have a digital certificate for you within a couple of business days. I would also keep a copy in my archive in case you ever needed to recover it in the future.
Opposed – Unfortunate, but it does happen. While your application was being published in the CIPO Trademarks Journal, someone paid a fee and filed a Statement of Opposition (a copy also goes to you). It will be necessary to file a Counter Statement to answer each point of contention in the Statement of Opposition. If you are able to successfully counter the opposition, your application will continue. There can sometimes be some back-and-forth with statements and counter-statements until the CIPO Trademarks Opposition Board makes a decision. The best initial strategy is to get in contact with the opponent and see if there is any reasonable compromise. Sometimes they will withdraw opposition if you make some minor modifications to your goods and services description.
Proposed Opposition – Your application caught someone’s attention while it was published in the CIPO Trademarks Journal. Wait and see what happens. The potential opponent may get in touch with demands, they may file opposition, or they could simply drop the matter and you will move on to the next stage of the application.
Registration Pending – Congratulations! Your trademark is ready for registration whenever you are. If your application was filed prior to June 17, 2019, there is a government registration fee of $203.59. If you need additional time before registering, there you may pay a fee and request a time extension.
Default – ***WARNING!*** You have missed an important deadline and your application is in danger of abandonment. Please take action at your earliest convenience to rectify this. If you would like assistance fixing this, let me know and I will give you a quote. If you have a copy of your most recent examiner letter, please include a copy of that in your response and we might be able to fix that problem at the same time.
Registered – You’re all done for now. Registration lasts for 10 years (15 years if you were able to finalize the registration before June 17, 2019). After that, you can pay a fee and renew the application.
Expunged – The trademark was registered, but isn’t any longer. Either it was not renewed, or it was successfully challenged for non-use.
Abandoned – The trademark application was not completed. Either a letter from the government was not answered, or the application was abandoned voluntarily. This also happens when you don’t finalize your registration in time.
Refused – The trademark examiner has refused to approve the mark. This is usually due to a perceived lack of progress and repetition of rejected arguments in responses to examiners. The examiner will provide a warning before refusing an application.
Watch for official letters from Innovation, Science and Economic Development Canada (Gatineau, Quebec). All trademark notices will come by regular mail.
Important Dates (Response Deadlines):
Look for a date near the top of your letters from the CIPO, just below the applicant and trademark information. If you miss the deadline, the application will be in default, if you miss it again, the application will be abandoned and you will probably need to start over from the beginning.
We do responses to examiner letters and revised applications. Send a copy for a free assessment! If it looks like it can be fixed, we’ll let you know and provide a quote.
Address Changes:
Make sure the CIPO has your most recent mailing address! You wouldn’t want to miss any important notifications.
Ownership Changes:
Like any other type of property, trademarks can be transferred between owners. If you sell your mark to another party, or if you want to transfer ownership to your new corporation, we can help.
What Kinds of Trademarks Can Be Registered?
Trademark protection is available for any unique words, phrases, images or sounds that you use to distinguish your products and services from those of your competitors. The most important trademarks are typically business names, logos, slogans, and unique product and service names that you create.
The United States is a major market, and your Canadian registration will not protect you outside of Canada. If you will be providing goods and services in the US, you should consider registering there as well. Thoughtwick Business Consulting can help you get this done. You will get a professional and experienced attorney for service who will handle all of the administrative details of your application. US applications are more expensive than Canadian ones, but they’re well worth it when done right. If you are interested, please ask for details.
