5 min
January 20, 2021

Trademarks (with the 7 don'ts to apply)

Updated:
July 24, 2024
Person writing on documents at a wooden table.

The Canadian Intellectual Property Office (CIPO) defines a trademark as a combination of letters, words, sounds, or designs that distinguishes a company’s goods or services from others in the marketplace. 

What is a trademark?

A trademark is very important to a company. It is the company’s unique identifier, not only for the actual goods and services it sells but also for the company’s reputation and brand. We have come to associate the golden arches with McDonald’s and the check with Nike. Doritos has aired a commercial where they do not ever mention the word “Doritos” but we know it is a Doritos commercial because we know the company’s brand. 

Ordinary Trademarks

An ordinary trademark includes words, designs, tastes, textures, moving images, mode of packaging, holograms, sounds, scents, three-dimensional shapes, colours or a combination of all of these which is used to distinguish the goods or services of one person or organization from others in the market. For example, if you want to start a card company called MagicCards, if all legal requirements are met, you can register these words as your trademark.

Certification Marks

A certification mark can be licensed to many people or companies to show that certain goods or services meet a defined standard. For example, the Woolmark design owned by Woolmark Americas Ltd is used on clothes and other goods to show that that specific item is made out of pure wool.

Trademark vs. Trade Name

A trade name is the name of your business, such as ABC Company. Under the Trademarks Act, you can register your trade name as a trademark, however, this is only possible if you also use your trade name as a trademark. This means you use your trade name to identify goods or services. For example, “Smarties” is both a trade name and a trademark as the company uses its trade name to identify their product. The CIPO uses the following example to illustrate this: *If we suppose that you own an ice cream business and that your company is named “ABC Ltd.”

Example 1: People know your ice cream under the name “ABC Ltd” because you use this name as a trademark. Therefore, you are able to apply to register your trade name “ABC Ltd” as a trademark. Example 2: People know your ice cream by the name “North Pole,” which is what you use to promote your product. Even though your company’s name is “ABC Ltd,” no one identifies your ice cream with this name. In this case, the name “ABC Ltd” is being used as a trade name and not as a trademark.

Registering your trademark

When you register your trademark with the CIPO, you are granted sole right to use the mark across Canada for 10 years.*You can renew your trademark every 10 years after registering. A registered trademark is one that has been entered into the Register of Trademarks. Once this has been, the trademark holder is provided with a certificate of registration which serves as direct evidence of ownership of the trademark. However, you do not have to register your trademark to own it. By using a trademark for a certain period of time, under common law, you are granted rights. So why bother registering your trademark? If you use an unregistered trademark and find yourself in a trademark dispute, you can expect to endure a lengthy and expensive legal battle over who has the right to use it. If you do not use your trademark for a long time, your registration may be removed from the Register of Trademarks, making it more difficult to prove legal ownership. 

Registering trademarks outside of Canada

Registering your trademark with the Registrar Office protects your rights in Canada only. If you wish to market your goods or services outside of Canada, then you may want to consider getting a trademark registration from the countries you wish to operate in. International Trademarks under the Madrid Protocol

The Madrid Protocol offers businesses and innovators the ability to obtain trademark protection in over 100 countries by filing a single international application with the World Intellectual Property Organization (WIPO). The fee is made in Swiss Franc (CHF) in order to make the process simple and reduce costs. Applications using this system are reviewed under the legislation and laws which exist in each of the designated countries. To file an application, the Madrid e-Filing system must be used. This system is accessible on the CIPO’s website and provides an easy step-by-step process which also automatically calculates fees. The International Bureau of WIPO will recognize the international registration date as being retroactive to the date the Registrar receives the application for international registration if it can be confirmed by the CIPO examiner and sent to the Bureau within two months of it being received. However, if the Bureau does not receive the international application within the two months, the international registration date is the date which the certified application is received by the Bureau. If the international application meets all the applicable requirements, the Bureau will register that trademark in the International Register. The Bureau will then notify the Offices of the designated Contracting Parties, inform the Office of origin and send a certificate of international registration to the applicant or representative. This does not mean that the trademark is automatically registered. The CIPO is responsible for notifying the Bureau of any changes in the scope of protection in the basic application or registration within five (5) years of the date of the international registration. The same applies if a proceeding (e.g. an opposition) began before the end of the five-year period, as the results may change the scope of the protection in Canada. Ordinarily, if an international registration is transferred a request can be sent to the Bureau using the required form. If the new owner is not able to obtain the signature of the previous owner, the transfer of ownership may be with the Registrar for presentation to the Bureau, but only if the transferee is a Canadian national, living in Canada or has an industrial or commercial establishment in Canada. This request must be accompanied by evidence of the transfer and a statement explaining that efforts to obtain a signature was made. If you wish to add more countries to an existing registration, the owner will need to complete a subsequent designation with the WIPO and pay the applicable fees. The CIPO does not accept or certify these requests.  

What can and cannot be a trademark

What you can register

You can register any trademark which does not contravene the Trademark Act. More details can be found here.

What you cannot register

A trademark is generally unregistrable if it is one of the following: 

1. Names or surnames

If a trademark is nothing more than a name or surname it cannot be registered. An exception to this rule is if you are successful at proving that your goods or services have become well known under said name or surname so that the word itself has acquired a second meaning in the public mind. 

2. Clearly descriptive marks

You may not register a trademark which clearly describes a characteristic or quality of your goods or services. For example, words like “sweet” for ice cream, “juicy” for apples, and “perfectly clean” for dry-cleaner services are descriptive characteristics or qualities. All apples, for example, could be described to be juicy. If you were able to register these words as a trademark, then no other vendor would be able to use them to promote their goods, which would be unfair. However, if you can establish that “Sweet Ice Cream,” for example, has become so well known that people will immediately think of your product and no one else’s, you may be allowed to register the trademark. 

3. Deceptively misdescriptive marks

You cannot register a trademark which is deceptively misleading. For example, if you are selling candy that is sweetened with artificial sweetener then you would not be able to register it as “cane sugar.” Or, if you have a courier service which uses ground transportation, you would not be able to register it as “air express.”

4. Place of origin

If your trademark describes the geographical location where the goods or services come from, you may not be able to register it. Allowing you to do so would mean you are the only one who can use the geographical place name, which would be unfair to others who do business in that place. You will also not be permitted to register a word that misleads the public into thinking that your goods or services come from a certain place when it does not. For example, if you had a clothing company and want to name it “Paris Fashions” but the clothes do not actually come from Paris, you would not be able to register this trademark. 

5. Words in other languages

You may not register trademarks that are thenae, in any language, of the goods or services associated with your trademark. For example, the word “gelato” means “ice cream” in Italian. You would not be able to register “gelato” as a trademark in association with frozen confections.

6. Confusing with a registered or pending trademark 

It is important to be aware of trademarks that are similar to other trademarks which are registered or are subject of a previously-filed application. If your trademark is confusingly similar to an already registered trademark or a trademark which is pending, your application will be refused. 

Trademark examiners will consider various factors when deciding if a trademark is confusing, including:

  • Whether the trademark looks or sounds alike and whether they suggest a similar idea
  • Whether the trademark is used to market a similar good or service

If we return back to our previous example of “North Pole” ice cream we can see how this looks in practice. Suppose another company manufactures and sells frozen-water products under a registered trademark “South Pole.” The public could easily think that the North Pole and the South Pole are made and sold by the same company. This is something trademark examiners would consider, which can mean that North Pole’s trademark application can be refused. You may not register for a trademark which is identical or similar to certain official marks unless you are given permission to do so from the organization that controls the mark. These official marks include: 

  • Official government designs (e.g. the Canadian flag)
  • Coats of arms of the Royal Family 
  • Badges and crests (e.g. the Canadian Armed Forces and the letters RCMP)
  • Emblems and names of the Red Cross, the Red Crescent, and the United Nations
  • Armorial bearings (coats of arms), flags and symbols of other countries
  • Symbols of provinces, municipalities and public institutions 
  • Certain subject matters that contain scandalous, obscene, or immoral ideas are also not permitted to be registered as a trademark.
  • For example, you may not register a trademark which includes profane language, obscene visuals or racial slurs. 
  • Portraits and signatures of living people or people who have died within the last 30 years. 

Things to watch out for when registering for a trademark

You cannot register a trademark if it consists of a plant variety denomination (when an individual or company is granted the right to control the multiplying and selling of reproductive material for a particular plant variety), or is a mark that closely resembles a plant variety denomination that is likely to be mistaken for it, where the application covers the plant variety or another plant variety of the same species. You also cannot register a trademark that indicates the geographical origin of a wine, spirit, or agricultural product or food, unless your goods are from said geographical area. You cannot register a trademark  that contain certain  subject matters which are either scandalous, obscene, or immoral in nature. For example, you may not register a trademark which includes profane language, obscene visuals or racial slurs. Portraits and signatures of living people or people who have died within the last 30 years cannot be part of your trademark registration. 

Who can apply for registration?

To be entitled to registration of a trademark, an applicant must be a person. This means that they are either an individual, a partnership, a trade union, an association, a joint venture, or a corporation. It is also possible for an application to include more than one persons, for example, “John Smith” and “ABC Company Inc.”

How to file an application:

Before you file a trademark application, it is important that you search the Canadian Trademarks Database. Although this is not mandatory, it will help you know whether or not a similar trademark already exists. To conduct a proper search, you will have to check for different possible versions of the trademark you wish to register. Note, for standard character trademarks (word or words) you should check for all possible spellings, including in French. You can find a tutorial here. A complete application includes the following: 

The name and mailing address of the applicantA representation or description, or both, of the trademark A statement in specific and ordinary commercial terms of the goods and services associated with the trademarkThe statement of goods and services grouped according to the Nice ClassificationThe application feeAny other requirements specific to the type of trademark sought to be registered

If you wish to file more than one trademark, a separate application for each must be submitted.

Representation or description

Your application must include a representation, description, or both of the trademark. It must clearly indicate what is the point of the registration. 

The representation may contain more than one view of the trademark if multiple views are required for the trademark to be clearly defined. The representation must not exceed 8cmx8cm in size. If your trademark is on colour or if it is claiming colour(s) as a feature, the representation must be submitted in colour, along with a description of the colour(s) and where it appears in the trademark. For trademarks that are sound and/or moving images, an electronic representation and a description of the trademark is required. You can find out more about representation and description requirements for non-traditional trademarks here.

Filing your application

You may file your application and pay your fee online or you may send your finished application with your payment by mail. 

Filing date

Once the Registrar has received your application, it will be reviewed to ensure it is complete. If any information is missing, you will be contacted to obtain it. Once this is completed, the Registrar will acknowledge receipt of application and will you give you a filing date. This date is the date which you have met all the requirements and is important since it is the date used to assess who is entitled to registration in the case of co-pending trademarks. Although it is possible to make changes to your application after it has been submitted, not all changes will be permitted. 

The examination process

After the Office receives your application and provides you a filing date, they will:

  • Search the trademark data to find any registered or pending trademark that is confusing with your trademark (if found, you will be informed)
  • Examine the application to make sure it does not contravene the Trademarks Act and Regulations, raise any objection to registering your trademark and inform you of any outstanding requirements
  • Publish the application in the Trademarks Journal after which the public may file an opposition, or challenge, to your application
  • Register your trademark if no one opposes to your application, or if an opposition has been decided in your favour

Abandonment

If you do not respond to an examiner’s report, the Registrar may consider your application abandoned. However, before this happens, the Office will notify you, giving you a chance to rectify the situation within a specific period of time. If you fail to respond during this time, you will need to file a new application and pay another fee. 

Do I need a registered trademark agent?

Preparing and completing your trademark application can be a complex process. Whoever completes the application needs to have a good amount of knowledge about trademark law and how the registration process works. However, be caution of unregistered trademark agents. These individuals are not authorized to represent applicants and support them in completing trademark applications. A trademark agent will help you prepare a properly written application so that your trademark is adequately protected. This is extremely important if someone were to challenge your right to use the trademark. It is not mandatory to hire a trademark agent, however, it is highly recommended you do so. Once you have an agent, the Registrar Office will communicate with that person. If you choose to terminate your arrangement with a trademark agent, the Office will then speak with you directly.

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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

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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

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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

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8. Stay Updated

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9. Seamless Integration

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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

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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.

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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.

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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.

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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. 

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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.”

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  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.
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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.

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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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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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How to Complete a Trademark Search in Canada
May 23, 2023