Trademark Registration FAQ

1. 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.

2. 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.

3. 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.

4. 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.

5. 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.

6. 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.

7. 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.

8. 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.

9. 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.

10. 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.

11. 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.

12. 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.

13. 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.

14. 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.

15. 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.

16. 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.

17. 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.