How to Complete a Trademark Search in Canada

If you're running a business, especially a growing one, you might find yourself grappling with an ever-increasing number of legal issues. Whether it's about contracts, intellectual property rights, compliance, or potential lawsuits, having consistent legal advice becomes essential. However, hiring a full-time in-house lawyer may not be cost-effective or practical for many small to medium-sized businesses. This is where a Fractional General Counsel (FGC) can shine. Below are 10 reasons to consider hiring an FGC for your business.

1. Customized Solutions

One of the greatest benefits of a Fractional General Counsel is that they deeply understand your business. We work hard to match you with a lawyer who fits your company culture and budget, and who has relevant expertise. This ensures that you get tailored legal solutions that fit the overarching business objectives of your organization.

“We immediately realized the advantages and efficiencies — quick response times from someone embedded on our team who can channel our culture, vision and strategy in their decision making — at a fraction of the cost.” — Rob Park, Former COO at Helcim

2. Free Up Your Executive Team

Instead of spending hours trying to navigate complex legal landscapes, you can focus on what you do best: running your business. Just see how it helped the CEO of Trufla Technologies get his time back!

3. Cost-Effective

Hiring a full-time in-house lawyer can be expensive. A lawyer with 10 years of experience can easily demand $200,000 per year. A Fractional General Counsel provides you access to an experienced lawyer without the overhead of a full-time salary, benefits, and other associated costs.

4. Expertise On Demand

With Fractional General Counsel, you have access to experienced legal professionals without the friction of having to engage external counsel. Simply send them an email, text, Slack message, carrier pigeon or phone call - and get specialized advice when you need it.

“The openness, availability, and responsiveness that we have with our Fractional Counsel is something we never experienced with our previous legal provider.” — Jodie Allan, General Manager at PowerBill

5. Flexibility

FGC engagements are flexible in order to fit your needs. Scale their services up or down based on your business needs and budget. Best of all, you don't pay for the time you don't use. Unused hours are rolled forward for future use.

“We are getting far more value from the Fractional General Counsel model than we have in the past with other legal service providers. The flexibility and accommodation to our business model and needs has been refreshing.” — Ryan Mueller, CEO of Phantom Compliance

6. Risk Management

Risk management is not just about avoiding legal troubles but also seizing opportunities. A Fractional General Counsel can help you take evidence-based strategic risks while giving you the confidence to adapt when the excrement hits the oscillating device. This approach can save you time, money, and hassle in the long run.

7. Managing Specialized Counsel

Complex legal matters require specialized lawyers, leaving some businesses juggling multiple external providers. A Fractional General Counsel can identify, onboard, and supervise legal specialists and ensure they are billing you fairly. The shared language of lawyers makes it easy for an FGC to collaborate and guide external counsel on business objectives and broader context.

“We found that we had to deal with many different firms and lawyers, retelling our story repeatedly. With Goodlawyer, it’s all under one roof… It frees me up and saves us money.” — Mike Bignold, Founder & CEO of CostCertified

8. Stay Updated

Laws and regulations change. A Fractional General Counsel ensures you stay compliant and informed about the latest legal changes that could affect your business. They can also help you predict future changes and skate to where the puck is going.

9. Seamless Integration

A Fractional General Counsel is integrated into your business operations, ensuring smooth collaboration with your team and stakeholders. Many function like any other team member, with a company email and title like General Counsel or VP of Legal. They can be a trusted voice at the boardroom table and represent your interests at the negotiating table.

“It’s been a huge load off my busy plate, and I love the peace of mind knowing our Fractional Counsel is guiding my team and me at critical moments.” — Brenda Beckedorf, Former Executive Director at Alberta IoT

10. A Trusted Advisor

Beyond legal advice, a Fractional General Counsel often serves as a sounding board for business decisions, providing a well-rounded perspective that combines both legal and business insights. FGCs typically have 10+ years of expertise relevant to your industry. They understand your sector, competitors, regulators, and other stakeholders who can be key to your growth journey.

Conclusion

A Fractional General Counsel is not just for businesses that can't afford a full-time lawyer. It's for businesses that want to free up their executive team with a responsive, trusted, and cost-effective legal solution. It's about having a tailored legal solution that provides on-demand access to someone who truly understands your business.‍

Learn more about Fractional Counsel

Business growth inevitably brings legal complexities. With your business speeding towards success, you're considering the transition from relying on external counsel to building your in-house legal function. But is hiring a full-time lawyer the right move? Or is there a more flexible, cost-effective solution? Let us introduce you to the concept of Fractional General Counsel (FGC).

FGC is an in-house legal solution tailored to your needs. Fractional General Counsel aren’t full-time employees. Typically they work 15-30 hours per month; but they're there when you need them. They manage your operational legal needs at a volume and monthly price that makes sense for your business. 

These legal professionals are a godsend for scaleups and fast-moving enterprise clients. They serve as your in-house legal team and tackle everything from enterprise contracts, employment and HR to corporate governance. The result is often a freed-up executive team, reduced risk and increased deal velocity.

In-house vs. external legal support

Your business's relationship with your Fractional General Counsel is fundamentally different from an external legal provider (i.e. a traditional law firm). While an external legal provider offers valuable expertise, they often don’t have the same depth of understanding of your business, your risk tolerance, or your objectives. They can also be less responsive than you might like — especially when it comes to your day-to-day operational legal needs like commercial contracts, regulatory compliance and employment matters.

External legal service providers are often unresponsive because they’re focused on major legal milestones like financings and M&A transactions, so they can be slower to respond to operational legal matters. 

"There's a reason that every large enterprise eventually builds an in-house legal team — to ensure their legal work is dealt with quickly, cost-effectively, and in tune with the overarching business objectives of the organization. That last piece, deeply understanding the business, is perhaps the greatest benefit of having an in-house legal function," says Brett Colvin, co-founder and CEO of Goodlawyer.

Fractional General Counsel do much more than just fill a void; they quickly become integral members of your executive team, saving you time and money, and adding a business lens to the legal problems you face on a daily basis. They integrate into your operations by adopting a company email, joining your Slack, or using whatever communication tool works best for your team. They can also design processes to speed up your legal processes. 

Many scaleups rely on Fractional General Counsel to manage the fast-paced operational legal needs and retain their external counsel on certain matters, particularly milestone events like funding rounds or M&As. In such cases, the FGC and external counsel can coexist and even become greater than the sum of their parts. The shared language of lawyers makes it easy for FGCs to collaborate and guide external counsel on business objectives and broader context.

The value proposition of Fractional General Counsel

Patrick Veilleux, a Fractional General Counsel at Goodlawyer, exemplifies the value of an FGC. Following five successful years at Shopify as Director of Legal, and stints on Bay Street and with the federal government, Veilleux missed the thrill of working with fast-growing Canadian scaleups. So in 2023, he joined Goodlawyer’s FGC ranks.

In Patrick’s words, "Being a Fractional Counsel enables me to provide sophisticated scaleup clients with both legal and strategic insights. The opportunity to be at the table during critical planning sessions empowers me to identify risks and opportunities proactively and help my clients chart the best path forward. It's also been incredibly rewarding to leverage my past experiences to help support some of the most exciting technology businesses in the country.”

5 Reasons why your business needs Fractional General Counsel

1. Tailored Arrangement: FGC allows you to design the scope, cadence and volume of legal support. Engagements are customized to your needs to best address pain points and capitalize on opportunities. Alignment with your company’s culture is imperative, and Goodlawyer allows you to meet and interview candidates to ensure the right fit. ‍
2. ‍Specialized Expertise: FGCs typically have 10+ years of legal expertise and specific knowledge relevant to your industry. They understand your sector, your competitors, your regulators, and other stakeholders who can be key to your growth journey. 
3. Freed-up Executives: CEOs, CFOs, and COOs often find themselves responsible for their organization’s legal function, spending valuable time managing external counsel and deciphering what is (and isn’t) in a contract. A Fractional General Counsel becomes your dedicated internal legal lead, freeing up executives and ensuring more efficient resource allocation.
4. Agile and Cost-Effective: Full-time in-house counsel brings substantial commitment and costs – salaries, benefits, office space, administrative burden and more. By contrast, FGC engagements offer a stable fee structure and immediate value. ‍
5. ‍Scalable: As your business grows, you can easily scale the engagement to match your expanding needs. Increase the monthly hours of your Fractional General Counsel, or add a Fractional In-House Counsel. If you find your needs reduced, engagements can be downsized.

Navigating toward Fractional General Counsel

Want to learn whether Fractional General Counsel might suit your business? Click the button below to set up a conversation with a senior member of the Goodlawyer team. We'll explore your legal requirements, analyze your annual legal budget, and determine if you need industry specialists or senior legal expertise. Our team will also introduce you to vetted candidates tailored to your business. A pilot engagement can allow you to gauge the efficacy of this model for your growing business.

Conclusion

With the dynamism of your scaleup and the legal intricacies that come with growth, it's essential to have legal counsel who understands your business and can respond quickly to your needs. The value lies in your FGC’s ability to provide both legal and strategic insights, like a dedicated in-house team, but at a fraction of the cost. Explore Goodlawyer's Fractional General Counsel services and discover how this innovative legal solution could boost your scaleup's journey.

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 Ready to embark on a thrilling solo adventure as a Canadian lawyer? Buckle up friend, the legal world is about to get a whole lot brighter! Whether you're bidding adieu to a big traditional firm, an in-house gig, or even the government, taking the leap into solo practice requires some serious planning and preparation. But fear not, for we've gathered the top 10 tips from seasoned Goodlawyer’s who have taken over the Canadian legal landscape on their own terms. So, let's dive into what is hopefully a delightful dose of inspiration!

Tip 1: Embrace the Art of Frugality

Who said you need fancy, overpriced resources to thrive? Seek out affordable gems that suit your working style — think budget-friendly practice management and billing software, administrative support (virtual and/or fractional options), and nifty tools to keep your inbox and calendar in check. By keeping your overhead costs low and increasing the efficiency of your practice, you'll have extra funds to sprinkle into growth.

Cheat code: if you’re interested in a one-stop shop for legal operations support, Goodlawyer offers all this and more to its lawyer network!

Tip 2: Let Your Personality Sparkle

Clients aren't just interested in legal services; they want someone they can relate to. So, be your fabulous, authentic self! Show off your approachable side, build those personal connections, and watch your clients swoon. When you're real and relatable, trust and loyalty will come knocking at your door. If the client still isn’t interested, keep calm and lawyer on; chances are high you’ve dodged what would’ve been a misaligned relationship!

Tip 3: Unleash Your Legal Swagger

Picture this: you, standing proud, armed with a unique value proposition in one hand, a clear understanding of the services you offer in the other, and a laser-focused target market as your sword and your shield. It's time to create your own legal destiny! Craft a compelling position statement that sets you apart from the pack and attracts the right clients and the work you love like moths to a legal flame. You're a lawyering superstar, after all!

Tip 4: Befriend the Big Guns

Now, here's a secret sauce to success — forge connections with other lawyers far and wide, whether from your previous legal world or in your new solo practitioner/small firm world!

These relationships can be your golden ticket to referrals and increased visibility in the legal community. Attend events and conferences, and hop into online groups to meet fellow legal eagles in and out of your field. It's like building your very own legal Avengers team!

Easy button: Goodlawyer gives you access to a highly engaged and supportive network of other Goodlawyers ready to help whether you need a second opinion, precedents, legal tech suggestions to level up, or a calming meditative playlist!

Tip 5: Master the Number Crunching Dance

As a solo practitioner, you're the captain of your financial ship. So, it's time to dust off your accounting superhero gear and conquer those financial statements with relish. This is a must for smooth sailing on the ethical and legal seas! Embrace the numbers, avoid ever-present financial whirlpools, and become the guiding star of your own financial destiny.

Tip 6: Love Yourself Enough to Say "No"

Not every potential client is a match made in legal heaven, my friend. Watch for those red flags and gracefully decline clients who might bring more chaos than harmony to your practice. Trust your spidey senses and your past experiences. Remember, your time, effort, and reputation are highly precious gems, so align and re-align these gems with the clients you choose to work with. You deserve the cream of the client crop!

Tip 7: Save Up for the Legal Storms

In the variable world of solo practice, income can be as unpredictable as a tea party with the Mad Hatter. So, it's time to save up for those rainy days. Start with a modest salary and squirrel away three months' worth of savings. Then, gradually increase your pay until you have a comfortable cushion of six months' worth of savings. Rain or shine, you're ready for anything the legal universe sends your way!

Tip 8: Don't Compromise Your Legal Integrity

When the cash flow slows down, the temptation might knock on your door, urging you to take on clients and matters you'd usually pass on. But hold your ground, dear lawyer! Only accept clients and matters that match your values and that you would handle even if money were falling from the sky. Stay true and be authentic to your legal soul, and success will follow suit.

Tip 9: Give Yourself a License to Chill

Building a thriving solo practice that suits your life and practice goals takes time. So, be kind to yourself on this epic journey. Start by working from the comfort of your own space until you're ready to set yourself up in a fancy office; not only are you avoiding the extra overhead and expense, but you might fall in love with a whole new way of working! Embrace the wonders of legal tech to keep your clients happy without the hassle of office visits and to avoid the gargantuan email chains just to schedule a call. Cheers to working smarter, not harder!

Tip 10: Be the Tax Maestro

Ah, taxes — the bane of every lawyer's (and human’s) existence! If you're not drawing a regular salary, maybe you can tango with quarterly taxes in Canada. Put aside one-third of every payment into a separate savings account, dedicated solely to the taxman. With this little trick up your sleeve, you'll breeze through tax season like a pro, avoiding any unwanted legal drama.‍

And voilà! You now possess the top 10 tips to conquer the Canadian legal world as a solo practitioner. Sprinkle them into your journey, dear legal trailblazer, and watch your practice soar to new heights. Wishing you endless success and all of the professional fun you can have in your marvelous solo adventure!

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Conducting a trademark search is a crucial step in creating an identity for a business to operate in Canada. A trademark search will help you determine if a similar or identical trademark already exists. Setting up your business branding without checking existing trademarks opens you up to the risk of using another trademarked identity which results in wasted time, money, and possible legal complications.

What is a Trademark?

A trademark is a type of intellectual property that provides legal protection for a brand or logo used by a person or business to distinguish their goods or services from others in the marketplace. It is a recognizable sign, symbol, design, word, phrase, or combination of these elements. Trademarks play a crucial role in business by establishing brand recognition, reputation, and consumer trust. They help consumers identify and differentiate between products or services ensuring they are getting what they expect from a particular brand.

Starting your Trademark Search with CIPO

The Canadian Intellectual Property Office (CIPO) online database search will be the most up-to-date source for trademarks in Canada. The CIPO Online Database Search allows you to search the Canadian Trademarks Database, which contains registered and pending trademarks in Canada. Visit the CIPO website and access the Canadian Trademarks Database (https://ised-isde.canada.ca/cipo/trademark-search/srch) to get started.

1. Start with a broad search: Begin with a general search using keywords or phrases that closely relate to your proposed trademark.
2. Narrow down the search: Once you have identified similar trademarks, refine your search using more specific terms related to your goods or services. This will provide a clearer picture of any potential conflicts.
3. Check different categories of marks: Search for similar trademarks in all relevant categories related to your goods or services. More information on the different categories is available here: https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/various-categories-marks  
4. Review variations: Consider searching for variations of your proposed trademark, including misspellings, phonetic equivalents, and plurals. These variations may still be considered confusingly similar.

Common Law Trademark Search

Common law trademarks are those adopted and used without registration, and their owners can claim reputation and goodwill to prevent others from using or registering a similar mark. After conducting your search in the trademarks databases, it is important to conduct a common law search to check if any businesses are using a similar mark without registration. These common law rights are limited to the geographical areas where the mark is being used.

To search for common law trademarks, consider checking local business listings in the areas of intended trademark use. Conducting a search for business name registrations can provide insights into similar marks within your province. Checking for claimed domain names with various extensions (.com, .ca, .org, etc.) can also help assess potential conflicts.

Furthermore, search the web and social media platforms for businesses or goods/services associated with confusingly similar names and marks. This broader search can uncover additional potential obstacles or conflicts.

Conducting a common law search is important to assess potential conflicts beyond registered trademarks and ensure your proposed mark does not infringe on existing rights or create confusion in the marketplace.

Analyzing Trademark Search Results & Next Steps

After conducting your CIPO search and completing a common law search, carefully review the results to identify any potentially conflicting trademarks. Look for marks that are similar in terms of name, appearance, sound, or meaning.

If you encounter potentially conflicting trademarks or are unsure about the search results, it is advisable to consult with a trademark lawyer or agent. They can provide expert guidance and help you make an informed decision about the availability and registrability of your trademark. While conducting your own trademark search is very valuable, it is not a substitute for professional legal advice. A trademark professional can ensure your proposed trademark is adequately protected.

Working with a Trademark Professional for your Search

It is highly recommended to consult a trademark lawyer or registered trademark agent during the process of selecting a business name and trademark. They can conduct thorough searches, assess availability, and provide guidance before you invest in branding efforts. If the desired mark is unavailable, they can assist in finding an available and distinctive alternative. A trademark professional is also well suited to assist with more complicated situations, like when a trademark is intended to be used across multiple jurisdictions.

Engaging a trademark professional early in these situations can help ensure informed decision-making, allow for smoother and more likely-to-succeed trademark applications, and avoid potential conflicts or infringements which can lead to costly delays, loss of goodwill if you have to rebrand, and legal complications.

As a savvy entrepreneur, you know the branding of your business is a critical asset for your future success. Preventing problems is cheaper than correcting them; handle your trademark with the gravitas it deserves!

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