Registered Trademark Agents

What the Trademarks Office Says About Registered Trademark Agents

For trademark applications, the Canadian Intellectual Property Office (CIPO) will deal only with the applicant or a registered trademark agent. On page 3 of their Trade-mark Guide, they say

Preparing a trade-mark application and following through on it can be a complex task, particularly if a third party challenges your right to the mark. You may file on your own, but it is highly recommended that you hire a trade-mark agent to do so on your behalf.

“In order to become a trade-mark agent, a Canadian resident must have worked in the field of trade-marks for at least 24 months, and have passed the qualifying examination.

“A resident of Canada who is a barrister or solicitor, or a notary in the Province of Quebec, may become a trade-mark agent by passing the qualifying examination or working in the area of trade-mark law for at least 24 months.

An experienced, competent trade-mark agent who is well-briefed can save you problems caused by such obstacles as a poorly-prepared application or inadequate research. If you intend to register marks in other countries, the use of a trade-mark agent is strongly recommended.

We are experienced registered trademark agents. In addition, our principal, Jack Smugler is also an experienced trademark lawyer, with a Master of Laws (LLM) degree.

Avoid Common Pitfalls

  • Defects in the application formalities may mean a re-application is necessary.
  • The wares and services claimed in the application are either too broad or too narrow.
  • An improper claim of ‘use’ of the trademark may render the application invalid.
  • Insufficient searches of registry and ‘common-law’ sources, leading to the adoption of a weak or confusing trademark.

Save Time

  • You can file directly on your own. However, it is strongly recommended that you develop a thorough understanding of trademarks and the registration process. The best source of information is the Canadian Government Trademark Site. You can find the link on our useful links page.
  • If there is a fundamental problem with your trademark application, you will not find out for approximately 12 months, when the first substantive response from the Trademark Office is received. You may then have to re-apply, which would add at least another 12 months onto the process.
  • Using a registered trademark agent saves time, freeing you up to concentrate on your business.

Save Money

  • A registered trademark agent can reduce the likelihood of having to re-apply. He/she can help you avoid proposing a ‘weak’ trademark candidate for registration. A weak candidate may result in rejection by the trademark office. As a result, you will have to begin with a new application, resulting in higher costs. In addition, you may need new stationary, cards, invoices, signage, etc.

Avoid Legal Hassles

  • Applying for or adopting a ‘weak’ and/or confusing trademark can lead to legal problems, such as ‘cease and desist’ letters and even court action.