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  1. What is a trademark?

  2. Are there different kinds of trademarks?

  3. What is the difference between trademarks and other forms of intellectual property?

  4. What is the difference between a "registered" and an "unregistered" trademark?

  5. Why register a trademark?

     

  6. What names are good candidates for trademark registration?

  7. What are the reasons why I should consider trademark registration?

  8. Can I protect my unregistered trademarks?

  9. Can I acquire trademark rights in my domain name?

  10. What is the proper way to use a trademark?

  11. Is registration mandatory?

  12. Why hire a trademark agent?

  13. Who can register a trademark?

  14. Who should register a trademark?

  15. How long does a registration last?

  16. How do I register a trademark?

  17. Does registration in one country protect my rights in other countries?

  18. What is the cost to register a trademark world wide?

  19. What is the difference between a trademark and a trade name?

  20. May I register my own surname name as a trademark?

  21. What other kinds of marks may not be registered?

  22. What are the steps to trademark registration?

  23. Why is the preliminary search important?

  24. Will the Trademarks Office tell me if my trademark can be registered?

  25. What do I need to include in my application?

  26. May I allow other parties to use my registered trademark?

  27. Will the Trademarks Office ensure that my trademark is not infringed?

  28. What are the Fees associated with a trademark application.?

  29. How current and accurate is your search process? Does it include pending applications?

  30. What guarantee is there that an application won't be rejected?

  31. Can a generic phrase be registered as a trademarked?

  32. What are the annual fees associated with a trademarked?

  33. Can a dictionary word be registered as a trademark??

  34. What is a "Common Law" Search?

  35. How often should a Federal Trademark search be conducted?

  36. Can a company that owns a trademark stop someone from registering a domain name?

  37. Can two words that sound the same, but are spelt different, infringe on each other.?

  38. I want to incorporate. What searches should I perform?

  39. What about redundancy?

  40. Should I still do Provincial, State and Common Law searches?

  41. I have my domain name registered. Do I need to trademark it?

  42. I have registered a domain name I want to sell. Can I do this?

  43. We develop web sites for clients. I am wondering if I can cause any problems to my client by registering, as a domain name, the name of a "well known international company" (are there any possibilities of a law suit or anything similar concerning the "well known international company")?

What is a trademark?

A trademark is a word, symbol or design, or a combination of these, used to distinguish the goods or services of one person or organization from those of others in the marketplace. For a more detailed description read Trademarks explained.

Are there different kinds of trademarks?

Yes, there are three basic types. Ordinary marks are words and/or symbols that distinguish the goods or services of a specific firm. Certification marks identify goods or services which meet a defined standard set by a governing organization. Distinguishing guise identifies the unique shape of a product or its package. For a more detailed description read Trademarks explained.

What is the difference between trademarks and other forms of intellectual property?

Trademarks are only one form of intellectual property that can be protected through federal legislation. The other forms are: patents, for new technologies; copyrights, for literary, artistic, dramatic or musical works or computer software; industrial designs, for the shape, pattern, or ornamentation applied to an industrially produced object; and integrated circuit topographies, for the three dimensional configuration of the electronic circuits embodied in integrated circuit products or layout designs. For a more detailed description read Introduction to intellectual property.

What is the difference between a registered and an unregistered trademark?

A registered trademark has been approved and entered on the Trademark Register held by the Trademarks Office. Registration is proof of ownership. An unregistered trademark may also be recognized through Common Law as the property of the owner, depending on the circumstances. For a more detailed description read Trademarks explained.

Why register a trademark?

Registration is direct (prima facie) evidence of exclusive ownership across Canada and helps ward off potential infringers. It enables your client to more easily protect his rights should someone challenge them since the onus is on the challenger to prove rights in any dispute. The process of registration, with its thorough checks for conflicting trademarks, will ensure that your client is claiming a unique mark, and help him avoid infringement of other parties' rights. A registered trademark is a prerequisite for franchising a business. For a more detailed description read Goodwill explained.

Is registration mandatory?

No, but it is advisable. For a more detailed description read Trademarks explained.

Why hire a trademark agent?

Trademark registration can be a complex process; an experienced agent can save you time and money by avoiding pitfalls such as poorly prepared applications and improper research. However, the prime reason for hiring an experienced Agent is his ability to address concerns of the Trade Marks office. If you fail to respond correctly, your application will likely fail. For a more detailed description read Trademarks explained.

Who can register a trademark?

Companies, individuals, partnerships, trade unions or lawful associations, provided they meet the requirements of the Trademarks Act.

Who should register a trademark?

There has always been a debate over who should own marks. As a rule, trademarks denote the source of goods. therefore the owner of the mark should be the party who derives benefit from the goodwill attached to the goods. For a more detailed description read Trademarks explained.

How long is registration effective?

Depending on the country registration is valid for 10 to 17 years and is renewable, upon payment of a fee, into perpetuity

How do I register a trademark?

You must file, or cause to be filed, an Application with the Trademarks Office.

Does registration in one county protect my rights in other countries?

No. If your products are sold in other countries, you should consider applying for foreign registration. Contact a trademark agent or the embassy of the country in question to find out about procedures.

What is the difference between a trademark and a trade name?

A trade name is the name under which you conduct business. It can be registered as a trademark, but only if it is used as such, that is, used to identify wares or services.

May I register my own name as a trademark?

Normally, you may not register a proper name neither yours, nor anyone else's, as a trademark. An exception may be made if you can demonstrate that the name has become identified in the minds of the public with your specific wares or services.

What other kinds of marks may not be registered?

In general, marks that may not be registered are: words that are clearly descriptive (e.g. "delicious" ice cream), terms that are misleading, words that designate a place of origin (e.g. "Atlantic" cod), terms or symbols that are too similar to an existing trademark, and terms and symbols that are expressly prohibited under the Trademarks Act.

What are the steps of trademark registration?

Trademark registration usually involves: a preliminary search of existing trademarks; an application; examination of your application by the Trademarks Office; publishing of the application in the Trademarks, Journal; time for opposition to the application; allowance and registration (if there is no opposition).

Why is the preliminary search important?

It helps you determine whether his application has a chance for success. It helps avoid infringing on other people's trademarks.

Will the Trademarks Office tell me during my preliminary search if my trademark can be registered?

No, the Office cannot provide an opinion at this stage. This can only happen during the examination process. Officials will give you general information about the rules and regulations.

What do I need to include in my application?

  1. The appropriate completed Application information.

  2. Written authorization if someone other than yourself or your trademark agent has signed the application;

  3. The application fee; and

  4. any required drawings and specimens.

May I allow other parties to use my registered trademark?

Yes. You may sell, bequeath or otherwise transfer rights to a trademark through process called assignments. You may also license rights to the trademark.

Will the Trademarks Office ensure that my trademark is not infringed?

The Trademarks Office does not act as an enforcement agency. You are responsible for monitoring the market place for cases of infringement and taking legal action, if necessary.

What are the fees associated with an application?

There are three sets of fees associated with an application. 

First: The search. Prior to filing any application a complete set of common law searches, with opinion, should be performed to determine if the mark you want to register is in fact available for registration. Our fee for the full common law search of both Canada and the USA is $240.00 (Canadian)

Second: Our fees for professional services: We would be pleased to file EITHER your American or Canadian application. Our fee to prepare, file, and prosecute each application up to and including the issue of the Notice of Allowance, but exclusive of any opposition, is $642.00. This is a flat fee that includes any and all work associated with reporting on the progress of the application to either the client or his agent as well as responding to all issues raised by the examiners. You do not receive any additional invoices from us during the application process.

Third: the government Fees - Effective January 2004

  1. Trademarks are registered in the USA by classification. In addition to our fees the USPTO charges a fee of $345.00 for each classification you want included as part of your registration. We will advise you of suggested classifications and the appropriate fees for same. The application process normally takes 10 - 12 months to be completed.

  2. In Canada there are no separate fees per classification. CIPO has one fee for the application ($300) and a separate fee for registration (*$200.00). The total fees payable to CIPO are $500.00. The application process normally takes 12 - 14 months to be completed.

  3. Each country has its own set of application requirements. For example; in Canada you can file one application combining both goods and services that are either in use or proposed for use. In the USA you can not combine an application based on "Use" with one based on "Intent to use". You must file two applications.

To proceed with your own, or any of your clients, applications you need to complete one of our Application Forms.

Fees associated with completing an application filed by others.

When we are asked to file a reply to an office action or complete the requirements of a Notice of Allowance then we charge the same fee as if we were filing a new application. Our fee to prosecute to completion of an application, other than the reply to a Statement of Opposition, when filed by someone outside our firm, is $642.00.

Please Note.

Fees are payable in the currency of the country where the application is filed. Canadian Fees are paid in Canadian dollars. USA Fees are paid in US dollars. Government Fees are payable in the application country and not refundable if the application fails. We accept payment for our fees by either Visa or Master Card. We also invite you to pay by wire transfer and welcome your firms trust cheque.

How current and accurate is your search process? Does it include pending applications?

Once a week, both the United States and Canada release all changes to their files. This includes new applications assigned application numbers (pending applications), status changes to all applications on file, and status changes to all registrations on file. This updated information is made available to us, which we in turn provide to you, typically within three days.

Our search engine does phonetic searches of all trademarks registered in the United States and Canada. The search looks at not only the trademark itself, but also for any similar words in the description of the registration as well.

What guarantee is there that an application won't be rejected?

There is no guarantee an application will be successful. The two primary reasons for rejection of an application are distinctiveness or confusion with other marks. However, once a trademark agent deems your mark registerable, it is unlikely to be rejected as the agent can argue in favour of registration. See our tmBasics section for more details.

What is the probability that a generic phrase can be registered as a trademarked?

Just about anything can be registered as a trademark including a generic term. The secret is to use the generic term in a unique manner such that the unique presentation has distinctiveness. In this regard you can stylized the words or letters or replace any of the words with the graphic version of the words. Potentially all these forms of the generic term could be registered.

I've been operating under the assumption that; if a word is in the dictionary, then it can not be registered as a trademark. Therefore is it safe for me to use it as a domain name?

The existence of a word in a dictionary could be a strong argument in favour of registration. Let me explain.

The dictionary gives words a meaning. You can not register the mark for products of that description. You can register the mark for all other products. Allow me to demonstrate. Start by taking any dictionary and opening it to any page. Now select any word from the page and read its definition. I have done this and selected the word "muller" defined as being "a stone or piece of metal, wood, or glass used as a pestle".

Therefore, by definition, you can not register the word "muller" to cover "a stone or piece of metal, wood, or glass used as a pestle". However, the word "muller" could be registered to cover clothing, or ice cream or a long list of items that are not made of "a stone or piece of metal, wood, or glass used as a pestle".

Let's assume you wish to offer web site development services and use the name "muller" as your domain name. When you start marketing you web site services using this the name "muller" you are in fact creating a whole new definition for the word. The word "muller" now means web site services and thus it has a secondary meaning. Words taken from a dictionary and given a secondary meaning become strong marks as there is a truly unique new meaning to the dictionary word that did not exist prior to your use.

Now that the word "muller" has a unique new meaning, and is associated with the services you offer, it becomes your trademark. It clearly distinguishes your web site services not only from all other web sites but also from any item made of stone or a piece of metal, wood or glass.

What is a "Common Law" search?

Common Law is one of those legal terms that is difficult to define. In relation to trademarks it may be thought of as either (1) your "right" to use certain words or terms based on factors that have been established by others and over time or (2) the "right" of others to prevent you from owning certain words or terms they use on a regular basis. Certain words, terms, phrases etc. are used in business as ordinary commercial terms. They are in the public domain. That is say they are used to "describe" a product or a group of products. If a word has a dictionary meaning then that meaning is a description of the word. No one has the right to monopolize such a word for that meaning. A "Common Law" search is a review of the "use" of a term or word by existing businesses to determine if the word or term has any special meaning or use within any industry. If a word or term has such a special meaning then every member of the industry has the right to use the term.

How often will we want a search of just federal registrations?

The current state of the Internet is such that any astute businessman or legal consultant can now perform complete common law searches of proposed new federal trademarks at no charge. The only searches he can not perform are searches of the Federal Trademark Registries. We can provide this service. To review a list of the sites you can visit to complete a common law search we invite you to visit our site and review the tmBasics section for more details.

If a company has a registered trademark, can another company, which does not do business or have any product with the same name, register a domain name with that name?

Without reviewing specifics it is difficult to answer this question. A trademark is registered to cover specific products and or services. Some marks are very famous and as such their protection extends beyond the wares or services as registered. Pepsi is a good example. The word is a mark covering beverages. However, if you were to attempt to use the mark for shoes the public would think they came from Pepsi. You have a conflict in this instance.

On the other hand, not all marks are famous. The degree to which a mark is well known is always subject to interpretation. Therefore, in answer to your specific question, yes you can register a domain name for one set of products that is not in direct competition with a registered mark for other products..

Unfortunately there is a catch. If the owner of the mark can prove his mark is famous you might lose your domain name on the grounds you knowingly used a famous trademark.

Can two words that sound the same, but are spelt different, infringe on each other.?

Trademarks, by definition, are registered to denote that products bearing the mark come from a single source within a specific industry. Infringement can occur where there is actual confusion as to the source of the goods or, as is more often the case, where there is a likelihood that confusion will occur. Likelihood of confusion means that there is a good chance someone will not know the source of the goods or think of the source is someone other than the owner of the mark. If the marks are the phonetic equivalent of each other and in the same industry, then there is a strong likelihood that confusion will occur.

I want to incorporate. What searches should I perform?

As an Internet user you have access to wealth of resources you can search. We have dedicated a section of our site to these resources. Start by returning to The Basics. Here you will find detailed access to some of the resources you will need.

What guarantee do you have that the research is accurate in the sense that when I apply I won't get rejected for redundancy?

First, allow me to explain that it is extremely rare for our office to complete a search without finding similar marks. The fact of the matter is there are not too many new original words being created as trademark names. The majority of marks are words in common use for which a new meaning is attributed and thus a registration will follow.

Second, redundancy is not an issue during the examination process. The two issues for rejection of an application are;

  1. not registerable on the grounds of none distinctiveness. OR

  2. not registerable on the grounds of confusion with other marks.

Should I still do a State and Common Law searches?

Our searches are Federal Only at this time. Yes you should conduct state and common law searches. You can do these on the Internet. Start by returning to The Basics section. Here you will find detailed access to some of the resources you will need. If, after you have completed these searches, and the results look favourable then we suggest you file an application. To proceed with your own or any of your clients applications proceed to and complete our Application Form.

In order to protect my registered Internet domain name should I register it as a trademark in just my home jurisdiction or country wide?

Your question is already the subject of three books. In other words the answer is not a simple one as it involves your use of the domain name and more specifically how it is used in relation to the products or services you offer. There are several elements missing from your question. First, do you operate a web site and if so do you sell products or services from the site. Next we need to review your customer base. Do you have out of state clients?

A state registration is equivalent to a trade name registration that declares you are using a name within the state. You have no protection outside the state. A domain name registration is your "Internet address" and does not include any nature of work protection. A Federal trademark registration is a US wide monopoly that grants you the right to the exclusive use of your Mark in respect of specific products or services. If you carry on business on the Internet then you are conducting inter state commerce and thus you are operating outside of your home state. This means you have the right to a Federal Trademark registration.

In respect of your question there are several considerations. To begin with I do not believe a state registration can afford any domain name holder with sufficient protection to warrant consideration. If your web site is a marketing vehicle for your business then you should consider Federal Trademark protection.

I have registered a domain name with InterNIC. The company that I want to sell the domain to has registered that name as a trademark and they are claiming trademark infringement.  Now they are threatening to sue me. Do I have any rights to use the name?

The deciding factor is how famous the trademark is . If it was say Xerox, a famous mark, and they are the only ones with this term recorded as a trademark on the registry then you have a problem. If the mark is more common then you do not necessarily have a problem but you will need to defend your rights. We strongly suggest you have a basic trademark search conducted so you can better assess your rights.

My suggestion would be to visit the TMFind section of our site and order a search of the owner of the mark, to see how many and which marks they own, as well as a full search of the registry page of the mark they have cited. In addition you will need to visit the TMSearch screen to order a basic pre-screen of the cited mark to determine if others have used same and if so how many. We will then review these search results and render an opinion and suggestions.

We develop web site for clients. I am wondering if I can cause any problems to my client by registering, as a domain name, the name of a "well known international company" ( are there any possibilities of a lawsuit or anything similar concerning the "well known international company")?

I believe the answer to your problem can be found in your answers to the following three questions.

  1. Will the new web site market products or offer services that are directly competitive with those offered by the "well known international company"? If you answer yes then do not create the web site.

  2. Will visitors to the new web site think they have arrived at one of the web site of the "well known international company"? If you answer yes then do not create the web site.

  3. Does the "well known international company" own the trademark, or market wares, for the name of the new web site within the foreign jurisdiction. If you answer yes then do not create the web site. For more information on the registration of conflicting marks read the domain name dispute policy at INTERNIC.

What names are good candidates for registration?

When considering trade mark candidates it should be remembered that 70% of all registered marks are "words", 20% are stylized words, while only 10% are pure designs. We have prepared a typical list of Good Candidates and invite you to review them.

What are the reasons why I should consider trademark registration?

Here are Nine reasons you should consider.

Can I protect my unregistered trademarks?

Yes. All you need to do is use your unregistered mark as a trademark. Read Proper Use of an unregistered mark for details.

Can I acquire trademark rights in my domain name?

Yes. All you need to do is use your domain name as if it were a trademark. Read Proper Use of a domain name for details.

What is the proper way to use a trademark?

Proper use of a trademark is the most import aspect of ownership. Failure to use a mark correctly will result in loss of the mark. Here are the Do's and Don'ts for Trademark Use.

What are the fees to register a trademark world wide?

There are 140 other countries around the world where we can register your trademarks. On average the fee to register a mark in each foreign country is $US 800.00 (US Dollars). The exception to this rule is Europe where we can file one registration with the EEC that covers some 15 countries. The total fee for this EEC registration is about $US 4,000.00.

We do not file and prosecute applications outside of Canada and the USA. We deal with other agents in each of the other countries. We have only completed two other world wide registrations. Each application took us approximately 200 hours to administer over the 14 months it took to complete all the registrations. Our fee to administer a world wide filing is $US 30,000.00 (US Dollars).

We would be pleased to undertake this task on your firms behalf. However, you should be aware that we would require a retainer of $125,000 (US Dollars) as we would be required to disburse the majority of this amount in the first month.

What are the annual fees?

There is no mandatory annual fee to maintain a registration. However, it is advisable for trademark owners in subscribe to a trademark monitoring service that will alert the owner to any new trademarks or domain names that are registered in conflicting jurisdictions.

 
 
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