Boutique Trademark Prosecution & IP Litigation Law Firm

Trademark Registration (Canada/US)

Trademark Registration (Canada/US)

Register a trademark in the US & Canada with experienced, results driven trademark lawyers who help clients pursue trademark registrations before CIPO and USPTO.

Our Services Include:

  • Preparing and filing trademark applications before CIPO, the USPTO and WIPO
  • Responding to office actions and trademark examiners’ reports
  • Providing trademark clearance opinions and trademark search reports
  • Pursuing and responding to trademark “non-use” cancellation and expungement proceedings
  • Pursuing and responding to trademark opposition proceedings
  • Pursuing and defending trademark infringement actions and applications

trademark registration in Canada

We have considerable expertise and experience in helping clients pursue trademark registrations before both the Canadian Intellectual Property Office (CIPO) and the United States Patent and Trademark Office (USPTO). We also have experience filing trademark applications through the World Intellectual Property Office (WIPO) under the Madrid Protocol, which permits Canadian and U.S. based businesses to file trademark applications worldwide.

A Canadian-based business wanting to pursue trademark registrations in the United States must have a U.S. licensed trademark attorney represent them before the United States Patent and Trademark Office (USPTO). We are licensed to practice U.S. trademark law and are able to assist clients from right here in Toronto with U.S. trademark registrations, trademark oppositions and trademark cancellation proceedings before the USPTO.

Registering a trademark is a highly technical process. Our experienced trademark lawyers and trademark agents will ensure that you obtain the broadest scope of protection for your trademarks and that your trademark applications proceed as quickly and efficiently as possible. We have expertise in avoiding and overcoming all of the issues that trademark applications may face in CIPO and the USPTO – we’ve seen them all!

Trademark Basics

A trademark can be a word or phrase, a symbol or design or any combination thereof that is used or intended to be used to identify or distinguish you as the source of your goods or services.

Trademark Search And Clearance

It is important to conduct at least a basic trademark clearance search before adopting a new trademark or applying to register a trademark. This will limit the risk of investing in a new trademark or trademark application only to discover later that someone else has prior rights in the same or a confusingly similar trademark. At Shift Law, we can provide valuable trademark clearance advice for any budget, working directly with clients as well as with their outside branding consultants.

Choosing A Strong And Enforceable Trademark

Some trademarks are more easily protected than others. For example, words that are descriptive of products or services generally cannot be protected as trademarks. The strongest trademarks are those that are fanciful or are arbitrary in relation to the goods or services that the trademark is to be used with. At Shift Law, we work with clients directly and with their outside branding consultants to select strong and enforceable trademarks for use in association with their business.

Protect Your Brand On Amazon

Are you an Amazon seller who has scaled up their business quickly and is now facing counterfeiters, but Amazon will do nothing about it? Make sure you take advantage of the Amazon Brand registry. It is a program made for the exclusive use of sellers who have a registered trademark or a pending application. Make sure you check out our Guide to Protecting Your Trademark on Amazon and get on Amazon’s Brand Registry to stop other sellers from infringing your trademark rights.

Frequently Asked Questions

What is a trademark?

A trademark is any kind of sign or symbol, including a word or phrase, that a trader uses to distinguish its goods and services from those sold by someone else in the marketplace. Logos and phrases are the most common types of trademark, but you can distinguish your products from those of your competitors using a variety of other signs such as sounds, tastes, colour schemes or even holograms, three-dimensional shapes and modes of packaging.

What can be registered as a trademark?

Any kind of trademark (e.g. a word, phrase, logo or sound) that identifies your business as a source of goods or services can be registered, subject to certain restrictions (see “What can you not register as a trademark?”). Some trademarks are more important to register than others. Experienced trademark lawyers like the lawyers at Shift Law can help you identify what is most important to register within your budget. Generally, it is more important to register the word(s) you use in your name than it is to register your logo because the scope of protection will generally be wider.

What can you not register as a trademark?

You cannot register as a trademark anything that fails to function as a trademark – that is, anything that fails to identify a single source of goods or services. For instance, you cannot register a trademark that is, or is confusingly similar with, a mark that someone uses to sell the same kinds of goods and services. Words that clearly describe the goods or services you are selling are also not registrable. Trademark legislation also prohibits the registration of certain “prohibited marks” including, among other things, national flags, emblems and crests.

How much does it cost to register a trademark in the U.S. and Canada?

The costs of an application to register a trademark will include professional fees and government fees. The government fees in Canada are $336 for a single class of goods or services plus $102 for each additional class. The government fees for U.S trademark application will range from $250 USD to $350 USD per class of goods and services. For professional fees, an applicant should budget approximately $1400 to $1700 CAD to cover all anticipated services for a straightforward application from filing through registration.

Is there an annual fee for trademarks?

Trademark registrations are not subject to annual fees in Canada or the United States. In Canada, the only fixed costs associated with a trademark registration are during the application process and at the renewal period every 10 years. In the United States, there is also an additional maintenance fee due on the fifth anniversary of registration that is required to show that the trademark is still active.

How long do trademarks last in Canada and the US?

In Canada and the United States, the initial trademark registration is valid for 10 years. After this, you can renew your trademark every 10 years by paying a renewal fee.

How long does it take to register a trademark?

The length of time to register a trademark will vary depending on several factors. On average, the trademark registration process in Canada will take two years or more. In the United States, the trademark registration process takes approximately 12 to 18 months, although it can take longer. In cases where the Trademarks Office raises issues with the application or where the application is opposed, the process can take much longer. But the moment you file an application, you are planting a flag in the sand and blocking anyone behind you from registering the same or a confusingly similar trademark.

How do I protect my trademark?

The best way to protect your mark is to register it. When you register your trademark, you are granted the exclusive right to use your mark across the country with the goods and services you have covered. You can also stop anyone else from using or registering a confusingly similar trademark. Registration can also help you protect your trademark rights online, including through e.g. Amazon’s Brand Registry.

Do I need to register my trademark to use it or protect it?

You do not need to register a trademark to use it. Trademark registration is about stopping others from using the same or a similar trademark as yours. You may have some protection for your trademark in a particular area if you have acquired a reputation with it in that area over the years. But registering it will make it much easier to enforce your rights in it and is the only way to protect a trademark that you do not yet enjoy a reputation with throughout the country.

What’s the difference between the ® and the ™ symbol?

The ® symbol indicates that a trademark is registered and therefore has full legal protection. The ™ symbol simply communicates that the word or phrase etc. is being used as a trademark and not as a descriptive term.

Who grants trademark registrations?

In Canada, trademark registrations are granted by the Canadian Intellectual Property Office (CIPO). The United States Patent and Trademark Office (USPTO) grants trademark registrations in the United States.

I’m expanding my business to the U.S. Do I need to register my trademark again in the U.S. if I already have it registered in Canada?

Yes. Trademark registrations are only national in scope. You must register your trademarks separately in each country in which you do business and wish to protect your trademarks. So, you will need to file a new application to register your trademark in the U.S. even if you already have a trademark registration in Canada.

If my trademark is registered in Canada, can companies in the U.S./overseas use it for their business?

Trademark registrations are only national in scope. You must register your trademarks separately in each country in which you do business and wish to protect your trademarks. So you will need to file a new application to protect your trademarks outside of Canada even if you already have a trademark registration in Canada.

Can I register my domain name as a trademark?

A domain name can be registered as a trademark but only if it is used as a branding device to distinguish its owner as a trade source and not just as a URL for a website.

What if someone registers my trademark as a domain name?

If someone registers a domain name that incorporates some or all of your trademark, you can pursue various legal remedies through domain name arbitration proceedings or in the courts.

What happens if you don’t defend your trademark?

If you don’t enforce your rights in a trademark, then you may lose those rights. That is because a trademark only exists as a trademark for as long as it distinguishes only one trade source. If you allow others to use your trademark, it will no longer distinguish your goods and services from those others’ goods and services. Enforcing your trademark rights can involve sending “cease and desist” letters, opposing applications in the Trademarks Office and suing others for trademark infringement.

What is considered trademark infringement?

Trademark infringement occurs when someone uses a trademark that is the same as, or is confusing with, a trademark owned by someone else. A court will determine whether two trademarks are confusing by considering several factors, including similarities in the marks themselves, similarities in the goods or services they are used with and the channels of trade through which those goods or services are sold, and the length of time that the trademarks have been in use.

How much does it cost to sue someone for trademark infringement?

All litigation is expensive, including trademark litigation. A typical trademark infringement case can easily cost $50k or more to get decided by a judge on the merits of the claim. Most cases will be $100k or more. But these costs will be spread out over many months or even years. Filing a statement of claim to commence a lawsuit and to force the other side to defend might cost $3k or less. The vast majority of cases settle somewhere along the way.

Additional Resources

Government Fees to Increase for US Trademarks

Effective January 2, 2021, the US Patent and Trademarks Office (“USPTO”) will be increasing a number of its fees for new US trademark applications, US trademark registration maintenance filings, and US cancellation and opposition proceedings, and other miscellaneous filings. These.
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Divisional Trademark Applications

On June 17, 2019, changes to Canada’s Trademarks Act came into effect, including the introduction of so-called divisional trademark applications. Seven months later on January 17, 2020, the Canadian Intellectual Property Office (CIPO) amended its practice notice on divisional applications,.
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Major changes coming to Canadian trademark law

Canada’s Trade-marks Act is about to undergo its most significant amendments since it was first enacted in 1953. Even the spelling of “trade-mark” will change (to “trademark”). Trademark practitioners and their clients should take note of the proposed changes (outlined below) as.
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