By this stage, the searches have been reviewed and there appears to be a strong likelihood that your trademark is registable. You may have an Opinion from a Registered Trademark Agent or reviewed the results yourself. CIPO charges $250 (no GST) for filing an electronic application.

How to File Options

1) Do-It-Yourself

This is the least expensive option if all goes well. However, in order to do a good job you should be prepared to spend a significant amount of time learning about trademark law and registration processes. The CIPO site has excellent materials available. The application form is relatively easy to fill out, but there are many potential pitfalls lurking beneath the surface.

2) Hire Someone

You can hire someone else to assist you. There are many companies that offer trademark searches and services. The less-expensive firms tend to have no professional status or liability insurance, and offer to ‘prepare’ an application on your behalf, which you must then file. They are not permitted to file the application, because the Trademarks Office will only deal with the applicant or professionals who are officially Registered Trademark Agents. Registered Trademark Agents make up the next tier of service-providers, and they are required to have at least two years experience and demonstrated trademark expertise before CIPO will register them. However, they are not required to carry liability insurance, so you should inquire about this before retaining such an Agent.

Lawyers who specialize in trademark law are available for legal matters such as trademark infringement, court cases and appeals to the Federal Court. However, a lawyer must still be a Registered Trademark Agent before CIPO will permit him/her to represent an applicant. As a matter of course, lawyers are required to carry liability insurance.

3) Hire Us

We are a full-service trademark firm, providing the services of both Registered Trademark Agents and specialized trademark lawyers. We provide quality service, experience and support. By utilizing the latest technology for on-line service delivery, we can offer both excellent value and superior service.

Post-Application Process

In the post-application phase, difficulties may arise either from Trademark Office objections to your proposed trademark and/or public opposition.

Trademark Office Examination

Once received, your application joins the line for Examination at the Trademark Office. After about 12 months, the Trademark Examiner will send a letter (called an Office Action), indicating what obstacles he/she sees to the registration of the proposed trademark. You are required to provide a timely and adequate response. If the issues are resolved, the Examiner then sends the trademark application on to the next step – publication.

Publication and Opposition

Essentially, the trademark registry is similar to the government putting up a public notice in a public place. This notice tells the world “this trademark gets special rights because they are on this register.” But before putting your trademark on this public list, the government wants to be sure nobody else has a better claim to your trademark. So, your proposed trademark is published in the Trademark Journal and the world is given two months in which to object. If someone does come forward during this publication period, then you have to go through the “Opposition” phase, which can be very expensive and time-consuming. If nobody does come forward within the two months, your trademark is ready to go on to the last step – registration.

Registration

Finally, once any Trademark Office objections are addressed and any opposition resolved, your trademark is eligible for registration. If required, you must at this stage file a Declaration of Use together with a formal request to be registered. The government charges another $200 at this time for a registration fee. In return you get a Certificate of Registration (suitable for framing!). The registration must be renewed every 15 years thereafter, for which the current CIPO charge is $350.

 

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