I have done a search and no one is using my exact trademark. Will registration be easy?
Not necessarily. “Nothing identical” is not the test for whether a trademark can be registered. A trademark must not be “confusingly similar” to another trademark. Learn more about ‘confusion’ here.
I have already registered a business name (sole proprietorship). Am I protected?
No. A registered trademark is different from a business name registration (sometimes called a ‘trade name’ or ‘business name’ or ‘corporate name’). If you want protection for a name, logo, slogan or design that will prevent others from using the same or similar trademarks, you need trademark protection.
I have incorporated using my trademark. Am I protected?
No. Incorporation is different from trademark registration. Only trademark registration protects your “brand”. Even if your corporate name includes your trademark (eg. TRADEMARK Inc.) it is not protected.
Do I have to register my trademark before I start selling?
No. You almost never “must” register a trademark. It is good business practice to protect yourself (from claims of infringement by others and infringement of your rights by others) by obtaining registration of your brand, and it helps to build value in your business. Often your trademark becomes your most valuable asset. You can apply for trademarks after you commence sales.
Should I incorporate first or trademark first?
Two different things. Incorporation is about legal structure of your business – this addresses various ownership, legal, and tax considerations. Timing of incorporation is usually driven by financing, business partner, liability and tax considerations (many businesses start as unincorporated sole proprietorships and only incorporate, if at all, years later). Incorporation does NOT protect your name or brand – that is what trademark registration does. You should trademark the name of your product/service (not necessarily the name of the business) as soon as finances permit, when you have your branding locked down.
Should I protect my logo?
Probably. You should protect whatever it is that helps customers find you and distinguish you from current and future competitors. Trademarks protect against ‘confusion’. Registration of a word mark will only protect against confusion with that word mark. Registration of a design is necessary to prevent confusion with a similar design.
Should I protect my logo with words?
Probably. The name of a product or service is likely very important for customers. You should protect whatever it is that helps customers find you and distinguish you from current and future competitors.
Should I protect my slogan
You should protect whatever it is that helps customers find you and distinguish you from current and future competitors. If your slogan is important, protect it.
Should I file one application for my name-logo-slogan-design to save money?
Probably not. Trademarks prevent against confusion. The more comprehensive your registration is, the easier it is for someone else to claim that what they are doing is not confusingly similar to your registration.
Should I protect my business / corporate name or the name of a product or service?
Trademarks are about protecting ‘customer goodwill’. You should protect whatever it is that helps customers find you and distinguish you from current and future competitors. If that is your business name, then protect your name. If it is the name of a product or service, protect that. If it is a logo and a name, protect each separately.
I filed my application months ago. Am I protected?
Not necessarily. First, applications take months (24-32 months on average) to proceed from application to registration. While some rights may be back-dated to date of application, real protection only starts when the mark is registered.
I want to register a name that I saw being used. Ok?
Probably not, but it depends. If your use will be confusing with someone else’s prior use, then ‘no’ you should not apply. On the other hand, if your use and the use by the prior user will be very different (for instance, in different countries or on completely different products/services), then it is possible that you can proceed. Learn more about confusion here.
I have already sold things using my name. Can I still register?
Yes. Definitely. You can register after you start selling. However, delay creates risk for your business and trademark, so “better late than never, but the sooner the better”.
What happens if I register the trademark and do not use it?
You can file a trademark application before you plan to use the trademark. After the trademark is registered for at least 3 years, if you do not use it a third party can apply to have it struck – and if you are unable to provide evidence of use of the trademark during the past three (3) years, your registration will be struck.
Am I protected in the United States?
Trademark registrations are ‘country-by-country’. A registration in Canada does NOT protect you in the United States (and vice versa). You must file in each country you want/need protection in.
Why has CIPO rejected my trademark application because the mark is “descriptive”?
A trademark must not be ‘clearly descriptive’ of the goods or services. For instance, it cannot be GOLD or COLD for beer. Learn more about ‘descriptiveness’ here. The best trademarks are unique and distinctive, not descriptive – like KODAK or XEROX. Some trademarks use common words but are clearly not descriptive of the products or services those businesses sell, like APPLE and BLACKBERRY or AMAZON.
What is the advantage of using you to file vs doing it myself?
Hiring an expert saves time, likely saves money, and vastly improves your prospects of success. You can file yourself, but should you? Probably not, if your time is valuable and you want the job done well. Trademark applications are complex, and skill and experience really do matter.
How long does the process take?
Applying for a trademark registration in Canada is a process that takes from 24-32+ months from ‘application to registration’. See a flowchart here.
Should I do a prefiling search?
If you have been using the mark for a while, then probably not.
A quick, inexpensive search before filing is highly recommended to see if there is an obvious ‘knock out’ that should prevent you from proceeding. Beyond that, for most small enterprises, a cost-effective choice is to file a trademark application and see what CIPO finds. However, this does not cover unregistered trademarks. If you will be investing a substantial amount of money on marketing or other branding initiatives, a comprehensive search before use is highly recommended.
I’m just a start-up. When should I file?
When you have the capital. The sooner you file, the better, in terms of protecting your rights. But trademarks cost money that you may not have right now. A rough rule of thumb is that you should invest in a trademark registration if your trademark is used to drive customers to choose you over your competitors.
What is the advantage of filing a trademark application?
Businesses do not have to register their trademarks. But wise businesses do register.
A trademark registration helps: i) establish that you are not infringing trademark rights of another, ii) prevents others from unknowingly registering marks that are confusing with yours, and iii) gives you rights to prevent others from using trademarks that are confusingly similar to yours.
I found another identical mark. Can I still use my brand name?
Probably not. However, it is possible that the other mark is in another field and your two marks could co-exist. Learn more about confusion and co-existence here.
Is there an international process – one application to register internationally?
Sort of. There is an international process for filing applications, but after that each application is processed nationally. Also, enforcement is entirely a national issue.
Do I need to incorporate prior to filing?
No. An individual can register a trademark, before or after starting a business. If you later incorporate, you can assign the trademark to the corporation. Learn more about assignments here.
I sell things online. Where do I need to register?
You need to register your trademark where your customers are located. Where your business is located is not as important as your customers. If you want to sell in to Canada from the United States, you should register in Canada. If you want to sell from Canada across North America, you should register in both Canada and the United States.
Someone is using my name on Amazon. What do I do?
Amazon offers ‘Amazon brand registry’, but to use it, you must have a registered trademark. If you have not registered your trademark, do that first immediately. Once it is registered, you can ask Amazon to prevent infringers from using your trademark. Again, the country of registration and the country of use/infringement matter – if possible, register the trademark in each country where you (or an infringer) will sell.
