It is possible to register your own trademark, although it can be difficult. Nevertheless, for many people, the cost of getting professional assistance makes this option the only realistic one. This section will help you with some of the basics, and the steps.
Step 1: Learn About Trademarks
In order to properly handle your trademark registration, you should learn more about the basics of trademarks, both common law and registered. From here the best place to start is the government agency responsible for registered trademarks – the Canadian Intellectual Property Office (CIPO). The CIPO home page contains links to all of their services, including patents, trademarks and copyright. The CIPO trademark home page contains more detailed information on trademarks alone. Make sure you read their Guide to Trade-marks, which is an excellent introduction. For more internet resources, just use your search engine.
Step 2: Searches
Although doing a trademark search isn’t required to apply for a registration, you should do one. Just looking for exact matches doesn’t tell the whole story. Proper searching can be difficult because you have to also look for similar marks. For more background, see our section on searching.
The first place to check will be the CIPO trademark database itself. Go over the database tutorial before you get started, so that you know how to search properly and understand the limitations of any search.
Once you’ve done the registry searches, you should look for tradenames and unregistered trademarks. Many people simply use an internet search engine. You can also ask for our free prescreen, which covers many registered Canadian tradenames.
The next step is to interpret the results. You should be especially familiar with the trademark concepts of confusion, descriptiveness and use. By way of example, even if there is an exact match for your mark, it may not be confusing because it is in a different business field. Alternatively, it may not be an exact match, but if it’s too close in sound and/or appearance it would be confusing.
Step 3: Application
Use the online trademark application at CIPO. First you’ll have to register with Industry Canada to get a username and password. Then you fill out the application form, pay your $250 application fee by credit card, and wait for CIPO to send an acknowledgement.
Step 4: Registration Process
If there are no issues with your trademark, it will normally take 12-16 months to complete the registration process. The last step will be paying CIPO an additional $200 for the certificate.
Some Common Errors We’ve Seen
- Defects in the application formalities, such as putting a Post Office Box as the address for the applicant.
- The wares and services claimed in the application are either too broad, too narrow or worded in a way that is not acceptable to CIPO.
- The date of first use of the trademark is wrong.
- The trademark is too descriptive.
- The trademark is described as a word when it’s a design or vice versa.