Frequently Asked Questions

We provide answers to Frequently Asked Questions (FAQs) as a service to stakeholders and others who are seeking information regarding Trade Mark Registrations

The Essentials of Trademark Registration

A trademark is a distinctive, specific identification which helps you stand out as the exclusive provider of your product or service. It provides you with the distinction of being a brand separate from other and may comprise a phrase, a symbol, or a word. The goal here is to stand out, thus a trademark cannot contain nonspecific or general terms alone.

The goal is to provide your product or service with a distinctive feature, distinguishing what you provide from what the others provide. A trademark works as identification, recognized easily, of your brand’s goodwill and standing for eminence in providing products and services to your customers. As time passes, a trademark gains reputation among consumers thus becoming more valuable. It builds more standing as it becomes renowned over time.

Having your trademark registered comes with many benefits, especially when dealing with legal procedures. A federal trademark registration provides your mark with advantages that are not available for unregistered ones. For starters, the owner of a registered trademark can take legal action against infringers in federal court if need be, and also prevent other people from registering a similar trademark in an associated field.

When you have a registered trademark, you can block forged imitations of your branded product from being traded into the country thus giving you a hold over your concerned field in the market. Moreover, having a registered trademark also comes in handy when and if involved in a domain name dispute, giving you a direct edge of having your mark legally sorted out.

When looking for a trademark name, remember to keep it unique with at least one distinctive expression, giving it a ‘one-of-its-kind’ impression. Trademarks are categorized according to how strong they are;

  • Fanciful: it is the strongest type of trademarks, usually comprising a made-up word or a phrase such as ‘KODAK’ or ‘EXXON”.
  • Arbitrary: this type of trademarks makes use of common and real words in a more creative, atypical manner. Words may be used in unusual ways to distinguish a brand having nothing to do with it meaning such as ‘Blackberry’.
  • Suggestive: A suggestive trademark is made up of words that are implying of the types of products being offered under the brand name. Such marks may comprise both imaginative and descriptive elements along with the suggestive characteristics of the products, such as ‘Airbus’ and ‘Netflix’.
  • Descriptive: This type of trademark is merely an explanation of the products and services provided under the brand thus appear to be rather deficient in the imaginative factor. The attributes of this type are too weak to function as a trademark such as ‘ice cold’ used for ice-cream. As a matter of fact, such type of trademarks require much effort to prove to the government that you have been using it for more than 5 years in commerce, or add a considerable logo to cover-up. Moreover, when using a descriptive trademark, you will have no rights to claim in its descriptive parts.

When deciding a trademark name, you can choose a word, phrase, symbol or even a combination of these. Better yet, you can trademark ‘your own name’ such as ‘Coco Chanel’. Wherever feasible, make sure your trademark is followed by a common descriptive of the product it represents.

While you can trademark your own name, you cannot do so with someone else’s name, a place’s name, or a proper noun. Also, you cannot trademark a slogan, if it comes off as an informational sentence, until and unless it is clearly and strongly tied to your specific products and services. As a matter of fact, trademark laws require you to come up with a mark that is distinctive and descriptive so that your brand is recognized.

Additionally, your brand name must be associated with specific products and services that you provide in order to qualify for legal trademark protection. You will only have exclusive right to use the logo and brand name for the products and services specified on your trademark application. In other words, you will not be able to reserve a specific trademark name with unidentified products or services for future use.

Established under the United States law, a common law trademark is when someone uses a logo, slogan, or brand name in commerce even if it is not registered. This is a way to not pay for trademark registration since common law trademark allows you to make use of the above particulars. However, as opposed to the Federal trademark registration where the mark is listed with the United States Patent and Trademark Office (USPTO), common law trademark rights are restricted to the geographic vicinity where the mark is used. Thus, unless your mark is registered it cannot grow beyond identified legal boundaries, creating a huge barrier for your brand to flourish.

Another drawback of common law trademark is that a person using this type of trademark can be easily confined by another who registers a similar trademark, since common law does not provide freedom of functioning or claiming beyond a specified boundary.

In sales and commercial activity, you are the owner of a trademark as long as you put it to use thus trademark rights are believed to be abandoned when the mark is no longer used in trade and commerce. It is called the ‘use it or lose it’ framework.

‘Use in commerce’ is when a brand name is being utilized on product labels or to promote business services. The trademark owner can apply for an ‘in use’ federal trademark under the Trademark Act in such cases, provided that he/she produces ‘proof of use’ of the trademark. A common type of such a proof can be a tag or label affixed to the goods.

Intent to use’ trademark in commerce is when the brand has not launched its products and services yet. In such cases, the trademark owner can apply for ‘intent to use’ trademark under the Trademark Act for which the USPTO will process the trademark application however, will not issue a registration certificate. To attain a registration certificate, the owner will have to submit valid ‘proof of use’ of the trademark.

Trademarks provide brand names and logos, which distinguish a certain company as the source of a particular product or service, with legal protection. The USPTO has the authority to grant and oversee the federal trademarks, which protect commercial activity across the state lines. Whereas state trademarks are also available, their authority to provide legal protection is limited to commercial activity within the particular state’s borders.

Patents are what provide intellectual property and legal rights to an inventor (the owner) to exclude others from producing, using, or selling an invention for a limited number of years. The granting and administration of patents is under the USPTO. In order for an invention to be patent protected, it must meet up to the following requirements which also involves a complicated legal analysis;

  • Statutory (not illegal)
  • New
  • Useful to consumers
  • Non-obvious

Copyrights provide legal protection to original work. The US Copyright Office has the authority to grant and administer Federal copyrights. With exclusive rights lasting up to 70 years under federal copyright law, the owner can make and sell copies of his/her work and/or perform and display the work publicly. .

If you are a US-citizen, you can file for a trademark application at teas.uspto.gov however the chances of your application being successful are very low because approximately 80% of the trademark applications not filed by attorneys do not succeed in registration.

If you are a non-citizen or a foreign corporation, a US-licensed trademark attorney will be required to file your application and represent you during the registration process that may last up to a year. 

The US trademark registry is crammed full since US trademarks are high in demand worldwide, making the United States one of the most difficult countries in the world to register a trademark. On an average, most US trademark application will receive at least one rejection.

Canada Trademark Registration

A trademark is a distinctive, specific identification which helps you stand out as the exclusive provider of your product or service. It provides you with the distinction of being a brand separate from other and may comprise a phrase, a symbol, or a word. The goal here is to stand out, thus a trademark cannot contain nonspecific or general terms alone.

The goal is to provide your product or service with a distinctive feature, distinguishing what you provide from what the others provide. A trademark works as identification, recognized easily, of your brand’s goodwill and standing for eminence in providing products and services to your customers. As time passes, a trademark gains reputation among consumers thus becoming more valuable. It builds more standing as it becomes renowned over time.

Having your trademark registered comes with many benefits, especially when dealing with legal procedures. A federal trademark registration provides your mark with advantages that are not available for unregistered ones. For starters, the owner of a registered trademark can take legal action against infringers in federal court if need be, and also prevent other people from registering a similar trademark in an associated field.

When you have a registered trademark, you can block forged imitations of your branded product from being traded into the country thus giving you a hold over your concerned field in the market. Moreover, having a registered trademark also comes in handy when and if involved in a domain name dispute, giving you a direct edge of having your mark legally sorted out.

When looking for a trademark name, remember to keep it unique with at least one distinctive expression, giving it a ‘one-of-its-kind’ impression. Trademarks are categorized according to how strong they are;

  • Fanciful: it is the strongest type of trademarks, usually comprising a made-up word or a phrase such as ‘KODAK’ or ‘EXXON”.
  • Arbitrary: this type of trademarks makes use of common and real words in a more creative, atypical manner. Words may be used in unusual ways to distinguish a brand having nothing to do with it meaning such as ‘Blackberry’.
  • Suggestive: A suggestive trademark is made up of words that are implying of the types of products being offered under the brand name. Such marks may comprise both imaginative and descriptive elements along with the suggestive characteristics of the products, such as ‘Airbus’ and ‘Netflix’.
  • Descriptive: This type of trademark is merely an explanation of the products and services provided under the brand thus appear to be rather deficient in the imaginative factor. The attributes of this type are too weak to function as a trademark such as ‘ice cold’ used for ice-cream. As a matter of fact, such type of trademarks require much effort to prove to the government that you have been using it for more than 5 years in commerce, or add a considerable logo to cover-up. Moreover, when using a descriptive trademark, you will have no rights to claim in its descriptive parts.

When deciding a trademark name, you can choose a word, phrase, symbol or even a combination of these. Better yet, you can trademark ‘your own name’ such as ‘Coco Chanel’. Wherever feasible, make sure your trademark is followed by a common descriptive of the product it represents.

While you can trademark your own name, you cannot do so with someone else’s name, a place’s name, or a proper noun. Also, you cannot trademark a slogan, if it comes off as an informational sentence, until and unless it is clearly and strongly tied to your specific products and services. As a matter of fact, trademark laws require you to come up with a mark that is distinctive and descriptive so that your brand is recognized.

Additionally, your brand name must be associated with specific products and services that you provide in order to qualify for legal trademark protection. You will only have exclusive right to use the logo and brand name for the products and services specified on your trademark application. In other words, you will not be able to reserve a specific trademark name with unidentified products or services for future use.

Upon registering a trademark in Canada, the trademark owner receives exclusive rights to use the particular mark for a period of 10 years. When the period has ended, there is the option to renew the trademark for another 10 years.

On the one hand, it is not necessary or required of a person to register a trademark to sell products and services on commerce. On the other hand, unregistered trademarks, where inexpensive and protected by the common law, are more likely to be disputed leading to expensive and extensive legal processes to determine the true owner of the particular, unregistered trademark.

Reasons to register your trademark in Canada

A registered trademark provides you with;

  • exclusive rights to use your trademark in Canada
  • exclusive rights to your brand
  • legal protection if/when other people use similar trademarks
  • the legal backup to stop trademark infringement
  • officially permitted access to prevent counterfeit goods
  • eligibility for certain benefits on the Amazon Brand Registry (Amazon.com) and other online retailers

The trademark registration can be owned;

  • by an individual
  • by a number of individuals
  • in partnership
  • by a trade union
  • by an association
  • in a joint venture
  • by a corporation

Legal service fee: $339 for the first class and $299 for each additional class

Government fee: $330 for the first and $100 for each additional class

Search the Canadian Trademarks Database

It prevents confusion and unnecessary legal processes if you conduct a thorough research on existing trademarks before filing a trademark application to make sure that your trademark is not similar to an existing one in the Canadian Trademarks Database. This can be conducted through the Canadian Trademarks Database , where the listings cover all the active as well as inactive trademarks. The best practice in this case is to look for various possible version of the trademark that you want to get registered. To be completely free of confusion, you may want to look up similar words, alternate spellings, and even translations in different languages.

Trademark Use in Canada

When you register a trademark, you have to put it to commercial use in Canada because if you don’t, the registration could be subject to expunging by the Registrar of the Register of Trademarks. The process of expunging could be started after three years on the very day that the trademark was registered by the Registrar or triggered by another party upon payment of the complete fee.

The procedure to expunge a trademark goes as follows;

  • The Registrar sends a notice to the owner asking for evidence of the trademarks’ use in commerce in Canada during the last three years or proves otherwise with viable reasons, the failure to use the trademark during the specified period. In the case where the owner fails to respond to the notice, the Registrar is legally authorized to pronounce the trademark liable to be expunged from the Register of Trademarks.
  • Upon receiving the necessary evidence, the owner of the trademark as well the other party which has filed for the process can produce written as well as oral arguments to support their respective cases.
  • Upon conducting a hearing and completing necessary legal requirement, the Registrar will expunge, amend, or maintain the registration.
  • The owner as well the other party has the right to appeal to the Federal court of Canada if/when the decision is not their favor.

China Trademark Registration

In China, you need to apply for trademark registration in order to receive legal protection as quickly as possible since China follows the ‘first-to-file’ rule. This rule means that whoever files a trademark application first has the ultimate right to attain exclusive rights over a trademark, even if the trademark has been in use before but was unregistered.

There are no such requirements in the country as ‘statement of use’ or ‘intent to use’. However, if your trademark has not been in use in China for three (03) years, it may be legally subject to cancellation for non-use.  

When your business is related is China’s market and commerce, the first thing to do is register your trademark at the earliest so as to prevent infringement. It also provides you with necessary legal protection for your brand since Trademark protection in the country are territorial.

In China, the below listed marks and signs are accepted for trademark registration;

  • Names
  • Device
  • Slogans
  • Words
  • Colors
  • Service marks
  • Sounds
  • Get-up or trade dress
  • Collective marks
  • Certain 3-dimensional shapes
  • A combination of the above items

China’s trademark classification system is based on the NICE (an international classification of goods and services under the Nice Agreement of 1957) classification model with slight differences.

Where the NICE model has 45 classes of classification, China uses sub-classification systems for each of the 45 classes where the goods and services are separated into numerous sub-classes. The goods are divided according to their functions, raw materials, and sales channel whereas the services are classified as per their content and target costumers.

It is important for goods and services under a trademark to conform to the goods and services listed in the Chinese sub-classification book. This is an important piece of information to consider if/when applying for trademark registration in China since the goods and services which are not specifically listed as per the sub-classification book are likely to be rejected.

The following requirements need to be fulfilled when filing a trademark application in China;

  • The trademark name. And of filing for a logo, the logo needs to be shown
  • Full legal name(s) of the applicant(s) and/or the name of organization
  • Applicant’s full address
  • A copy of your business incorporation certificate or passport of the individual applicant
  • A list of product that you sell or intend to sell under your trademark
  • Power of Attorney (POA)

After you file for a trademark registration, the process for approval takes about 15 months provided that no objection or oppositions take place.

In China, a trademark is valid for a period of 10 years and once thus period is complete, you can renew your trademark’s registration.

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