The life-cycle of a registered trademark can be divided into four stages: preliminary screening, full searches and opinion, application, and registration and maintenance.
Stage 1: Preliminary Stage
In the preliminary stage, the first step is to determine that it is a registered trademark that is needed. Having done so, ‘knock-out’ searches should be conducted to eliminate trademarks with obvious problems and to identify ‘strong’ trademark candidates. This is often done by conducting pre-screens of the trademark registry.
Stage 2: Searches and Opinion
Once through the preliminary screening, further and more extensive searches should be conducted. For example, searches should be conducted for not only exact matches, but also similar-sounding or similar-looking marks. For this reason, special algorithms are often used to conduct these searches. Searches should also be focused according to the field of trade that the trademark will apply to.
Stage 3: Application and Registration
Once the searches have been done, they must be examined with a view to whether the proposed trademark might be confusing with an existing trademark. If the Trademarks Office considers your mark to be confusing with an existing registered trademark, then your application will be refused. Whether it is ‘confusing’ is a complex determination, based on the Trademarks Act and the legal cases that have interpreted it. Most people choose to seek an opinion as to registrability from an official Registered Trademark Agent. If the application is refused on the basis of confusion, it can result in additional costs, years of delay and even the loss of rights.
Once it has been determined that no obvious obstacles to registration exist, an application can be prepared for submission. Care must be taken, as an error in the original application can result in CIPO rejecting it, again resulting in delays. It can also affect the validity of the registration itself and scope of rights associated with it.
The registration process typically takes two years in Canada, if there are no unusual problems.
Stage 4: Maintenance and Monitoring
Once the trademark has been registered, you must still maintain and police it. The consequesnces of not doing so can be serious. For example if you fail to properly respond to CIPO requests for documents, or if you fail to file for a renewal, your registration may lapse or be considered abandoned. If you do no monitoring and others use the trademark, even without your knowledge, you may end up losing some or all of your trademark rights.
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