FAQ 2018-01-02T14:55:01+00:00
What is a specimen of use? 2018-01-29T22:13:37+00:00

A specimen of use is a real‐world example of how your trademark is used on goods and services . Goods means products in layman terms.

To show use for goods, your trademark should be affixed on the actual product or packaging of the product. A photo, mockup or drawing of the mark is not enough.

A person can submit tags, instruction manuals, containers, labels, or packaging materials.

Advertising materials are generally not acceptable as a specimen for goods.

If you offer services, the easiest way to prove use is to provide a screenshot of your website so that the trademark is clearly visible in the website header. You can also provide flyers, directory listings, and brochures. A business card could be an acceptable specimen of use for services if the card displays your trademark along with the services the mark is associated with.

It is important to submit the right specimens of use in order to avoid trademark refusal. If you are not sure which specimens will be acceptable, call Trademark Angel.

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When do you need to submit specimens of use? 2018-02-17T03:06:53+00:00

You need to submit specimens of use upfront when you file a trademark application based on use.

If you file a trademark application based on an intent ­to ­use, specimens of use are not required with the initial filing.

Eventually, you will need to submit specimens of use before your trademark is registered. If you didn’t start using some of the products and services, they will have to be deleted from the application (or the application could be divided).

There is one exception to the general requirement of a specimen. This is when a US application is based on a foreign registration. In such a case, the intent­to­use filing basis may be deleted, and a US application may proceed to registration on the basis of the foreign registration alone assuming all other conditions for registration are satisfied.

After your trademark registers, you will need to file specimens of use to maintain your registration (between the 5th and the 6th year after registration). You will also need to file specimens of use when you renew your trademark registration.

If you are not sure if specimens of use are required, call Trademark Angel.

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How do I find an acceptable specimen of use? 2018-01-29T21:59:12+00:00

In this video, we will discuss some examples of acceptable specimens of use for your trademark application.

First, we’ll discuss acceptable specimens for products.

A photograph of the product showing the mark directly on the product.

Examples: the bottom of a coffee mug; metal plate on a bag or wallet; barbecue grill.

Product labels and tags showing the mark.

Example: inside label of a t‐shirt; hang tag on a blouse or pants.

Packaging of the product showing the mark.

Example: tissue boxes; packaged fruit or vegetables.

Signage used in a product display in a store.

Example: Photograph of the actual product display.

A webpage showing or describing the product near the mark and with purchasing information.

Example: a webpage shows a photograph of headphones, the mark for the headphones appears above the photograph, the price appears below the photograph, and a shopping cart button or other way to purchase the headphones appears on the page.

If your product is downloadable software, you can prove use by showing copies of the instruction manual and screen printouts from (1) the actual program that shows the mark in the title bar, or (2) launch screens that show the mark in an introductory message box that appears after you open the program. A web page showing the mark in connection with the information sufficient to download the software will also be acceptable.

A specimen for services generally shows the mark used in the sale or advertising of the services. A customer should be able to associate your trademark with your services on the specimen.

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Why Our BELLS AND WHISTLES Package is Worth the Investment 2018-01-14T16:43:45+00:00

While our BELLS AND WHISTLES package may seem like an initially steep investment, the benefits it provides end up paying long-term dividends to those who are serious about the protection of their trademarks!

This package comes with some cool bonuses that you don’t get with the ALL IN package:

  • If your trademark is refused by the Trademarks Office, you get free re-filing through the ALL IN package (a $695 value). All our professional fees are waived.
  • You get three years of free trademark monitoring (a $900 value). If somebody files a similar mark, you’ll be the first to know.
  • If your address changes, we’ll update it with the Trademarks Office (a $50 value).
  • If you decide to transfer your trademark to another company or person, we’ll record one trademark assignment for free (a $100 value). You’ll only pay the government fee.
  • If you think you may need the writing of a cease-and-desist letter, we’ll write one for you, signed by an attorney (a $500 value).
  • This package comes with unlimited consultations with us about your trademark (an average value of $200).
  • Perhaps most importantly, the BELLS AND WHISTLES PACKAGE includes responses to substantive objections, including confusion objections, which can be very frustrating in getting your trademark(s) registered!

Confusion objections occur often enough that it’s worth an explanation:

The difference between the ALL IN and BELLS AND WHISTLES package is $300. Sounds like a lot. But if a confusion objection has issued with the former package, the hourly rate of addressing this objection, combined with other legal fees, almost always exceeds $300. In fact, the savings becomes apparent with even one “office action” issued by the Trademark Office. This doesn’t include instances in which multiple objections have issued, which happen more often than you might realize!

With the BELLS AND WHISTLES package, your fees are set from the get go; you’ll know that you won’t need to pay a dime extra, regardless of how many times we have to respond to objections. And finally, if we do get a refusal, we’ll re-file your trademark through our ALL IN Package (a $695 value). And even if we don’t get any confusion objections, the added bonuses above still make this package the best deal for your investment.

Our BELLS AND WHISTLES package can be compared to good insurance. You won’t know if you need to make a claim, especially one resulting from a frustrating confusion objection. But if you do, then you’re covered!

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Do you have money-back guarantee? 2017-12-18T23:01:53+00:00

No, we do not offer the money-back guarantee.

We offer free re-filing, should your trademark be refused. For details click here.

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I am overwhelmed. Where do I start? 2017-11-26T03:58:52+00:00

Order a free trademark search, or contact us to book a free trademark consultation.

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What does free re-filing of my trademark mean? 2017-11-25T20:50:14+00:00

Free re-filing is not available if you select our SAIL THROUGH package.

If you select our ALL IN package and if your trademark is refused, we will your re-filing trademark for free. Your newly filed trademark will be filed on our SAIL THROUGH package conditions.

If you select our BELLS AND WHISTLES package and if your trademark is refused, we will re-file your trademark for free. Your newly filed trademark will be filed on our ALL IN package conditions.

Question: Who pays government fees?

Answer: You are always responsible for paying applicable government fees.

Question: What if I change my mind about pursuing my trademark? What if I decide to re-brand? What if my trademark is opposed?

Answer: If you decide to abandon your trademark, change your mind about pursuing your trademark registration or if you decide to re-brand, we will not re-file for free. If your trademark is opposed by a 3rd party during the opposition period and if you choose not to defend it or if you lose during the opposition proceedings, we will not be able to re-file for free. We will re-file your trademark only if it’s refused by the Trademarks Office during the examination process.

Question: Can I re-file for different goods and services?

Answer: No, free re-filing must be done for the same goods and services. You may decide not to include some goods and services, but you may not expand the original scope of the goods and services.

Question: Can I ask for money-back instead?

Answer: No, we do not offer money-back.  Free re-filing offer has no monetary or cash value.

Question: How soon do I need to re-file?

Answer: Free re-filing offer must be used within 6 months after a client was notified of refusal.

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What are government filing fees? 2017-11-26T03:50:16+00:00

Government fees are not included in our packages and are extra.

Canada

Canadian government filing fee is C$250.
Post-allowance government fee is C$200 (payable just before your trademark gets registered).
At present, government fees don’t depend on the number of classes.

USA

US government filing fee is US$275 per class. We may even qualify for the lowest filing fee of US$225, if we use the US Trademarks Office pre-approved pick-list.

If we file your application based on “intent to use”, i.e. future use, then there will be extra government fees. Government fee to file a Statement of Use is US$100 per class per mark. We do not charge any additional fees for the submission of a Statement of Use.

European Union

The EU government filing fee is EUR €850 for the first class. The filing fee for the second class is EUR €50. The filing fee for each additional class is EUR €150.

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What are office actions? 2018-01-13T19:08:22+00:00

An Office Action is an official letter from the Trademarks Office. In this letter the Trademarks Office lists problems with your trademark application. You must respond to an office action. If no response is filed, your application will be abandoned.

You have 6 months to respond (in the US no extension is possible, in Canada you can get a 6-month extension of time). In your response you have to explain why your trademark should receive registration and you have to address the objections listed in the office action.

Administrative (non-substantive) office actions

An administrative office action can usually be overcome by providing additional information to the Trademarks Office or by making revisions to your application or to the statement of goods and services.

Administrative rejections typically include:

  • Wrong specimens (the photos you submitted showing your trademark in use)
  • Vague or unclear identification of goods and services
  • Wrong classification of goods and services
  • Providing wrong entity type of the applicant
  • Missing disclaimers
  • Missing translation or not providing trademark meaning
  • Missing signature in the application

The above objections are fully covered by our ALL IN and BELLS AND WHISTLES packages. 

 

Complex (Substantive) office actions

A substantive office action may include descriptiveness or likelihood of confusion issues.

Descriptiveness issues arise when your trademark describes, misdescribes or provides a deceptive description of an ingredient, quality, characteristic, function, feature, purpose or use of the identified goods or services.

Generic refusals arise when your trademark names the products or services in your application. These are usually very difficult or impossible to overcome.

likelihood of confusion rejection is when the Trademarks Office considers your trademark confusingly similar to an earlier filed trademark application or registered trademark. Your office action letter will list the marks that your application is confusingly similar to. Such a rejection usually requires a long and well-thought out response and/or planning of a strategy.

The substantive objections are fully covered by our BELLS AND WHISTLES package.

 

 How can you avoid getting an office action?

  • You can never be completely certain that no office action be received. However, a risk of getting an office action can be minimized.
  • The best way to minimize a risk of getting a substantive (confusion or descriptive) objection is to do a proper trademark search.
  • If a conflicting mark is found, the trademark name may be adjusted or completely changed as well as the description of goods and services can be adjusted to avoid any overlap with the conflicting mark.
  • To minimize a risk of getting an administrative objection, the trademark should be filed using proper specification of goods and services. If specimens of use are submitted with filing, they should properly show use of the trademark. Translation and meaning of the trademark should also be provided at filing.

 

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Why a trademark search is never 100% accurate 2018-01-15T15:32:03+00:00

Although a trademark search is very useful and necessary in order to determine if a mark is registrable, the risk and challenge are never completely eliminated. Even an especially thorough search may not uncover every potentially conflicting mark, for several reasons.

In the United States or Canada, a newcomer to the search process might expect that it would suffice to check only the records of the USPTO or CIPO. However, one cannot rely solely on a Trademark Office database search, since registration is not necessary to obtaining trademark rights in the United States or Canada.

Many valid trademarks exist at common law without ever appearing on the trademark register.

Thus, in addition to checking Trademark Office database, one should check the Internet, and also different marketplaces including Amazon, eBay, Etsy, Shopify and company databases looking for the use of unregistered marks.

Searching common-law marks is not very easy and is never cheap since there is no single source, that lists every unregistered mark in current use in the United States or Canada. There are many potential sources of information that could be searched on, and it is not economical to try to search them all.  Just by way of example, a full search in the US will cost you $1500.

Additionally, one cannot expect that every source will provide accurate, complete, and up-to-date information at the time the search is conducted because every database has its limits.

Trademarks Office database, whether Canadian or US, is never completely up to date, because a time lag exists between the time an application is filed and the time it appears in the search database (the delay is about 7-days). Therefore, recently submitted applications will not appear in a trademark search, even though the lag may be only a few days long.

Also, foreign applicants may obtain an effective U.S. (or Canadian) filing date that is as much as six months earlier than the actual filing date if they claim priority from the filing date in their native country.

That means there is always a risk that a foreign entity may file in the US or Canada, and claim priority from the initial filing date in a foreign country. A search will not reveal a trademark that has not yet been filed. This means you could file an application for the mark thinking that it’s registrable, only to have a foreign applicant “jump the line” with a belated application based on an earlier foreign filing date.

Trademarks Office databases are also not always accurate. It’s possible for a system to time out so your search will not uncover all the results. It’s also possible that a trademark is not indexed properly so a confusingly similar trademark may not even show up in a trademark search.

Even if the databases were completely up to date, searching would still be an imperfect science. Trademarks do not always follow established rules of spelling, grammar, construction, punctuation, or meaning. Misspellings, wordplay, unusual constructions, creative punctuation, and other inventive variations are commonplace, and they create unexpected pitfalls for searchers.

For all these reasons, it is possible to perform diligently and evaluate a search, and conclude that a mark is available, when in fact a direct conflict may exist, that are hidden from view.

Let us give you a few examples:

You may do a search for DONUT for advertising services, and the search is clear. However, you will not know that there is a foreign equivalent trademark in French – BEIGNET and although not identical, this mark may present a serious challenge. In Canada, one must search for French equivalents, and in the US, under the doctrine of foreign equivalents, words in other languages are translated into English and are tested for likelihood of confusion.

It’s not possible to search for all synonyms. For example, if you’re searching for WALKING DOGS you may not find STROLLING PETS and this mark, although not the same, may be found confusingly similar. A trademark search for LADY VET may not show trademark search results for MADAM PET DOCTOR.

Finding different spelling is also challenging. If you search for EXTRAVAGANZA, you may not find EXTRABAGANSA, and if you search for VAGABOND, you may miss BAGPOND. A trademark search for QUICK may not uncover KWIK, KWIX, QUIK and trademark search for EASY may not uncover E-Z, EZEE EEZY, EASI.

Trademark Angel uses Corsearch searching system which allows to search for phonetic equivalents and vowel substitution. Once a trademark search is done, all the data can be organized according to relevance.

In addition to the above, it’s critically important to search for the right classes. Omitting a class may result in missing an important trademark. It is advisable to search for broader classification than the real filing to catch all possible conflicts.

Having said this no search is 100% accurate. That’s why we always advise our clients to check the Internet, marketplaces and social media use in addition to asking us to do a trademark search. For social media search, we recommend you use https://namechk.com/, which will allow you to check all domain names, social media usernames – all at once. Coupled with a proper Trademark Office database search, you have a pretty good idea if your trademark is registrable.

Since a search cannot completely eliminate the risk, the realistic goal is to eliminate as much risk as possible. This is why it’s advisable in addition to doing your own, due diligence to go to professionals who’re experts such as Trademark Angel, a trademark registration firm with over 18 years of experience in the area of trademarks.

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Why should I hire a trademark agent? Why should I hire a trademark lawyer? Can I register trademark myself? 2017-11-25T21:16:14+00:00

Registering a trademark is a time-consuming and complicated process. That’s why the Canadian Trademarks Office recommends hiring a registered agent. A full list of trademark agents can be found here: http://www.ic.gc.ca/cipo/mc-tm/agents.nsf/tmagents-eng?readform&wt_src=cipo-tm-main.

A trademark agent will help you by:

  • Conducting a proper trademark search to determine if your trademark can be registered.

 

  • Increasing your chances of getting your trademark registered. A 2013 Wall Street Journal article reports that register trademark applicants represented by a trademark professional are 50% more likely to get through the registration process than those that who go it alone. Although this is a US article, I am sure statistics in Canada is similar. https://blogs.wsj.com/law/2013/04/10/when-it-helps-to-have-a-lawyer/

 

  • Saving you time—a trademark agent will monitor all Trademarks Office updates, leaving you time to run your business. A trademark agent will also correspond with foreign agents on your behalf if you file in other countries.

 

  • Saving you money— if you file incorrectly, your trademark will be refused and you will have to pay additional fees to re-file. If you have already spent time on your brand, such as website, business cards, stationery, advertising, you will have to re-brand and this will be expensive.

 

  • Giving you invaluable advice when you need it.

 

  • Helping you to sleep soundly at night – a weak trademark will leave you vulnerable to receiving a “cease and desist” letter and to court actions.

To open in a new tab, click: Why should I hire a trademark agent? Why should I hire a trademark lawyer? Can I register trademark myself?

Why should I use Trademark Angel to register my trademark? 2018-01-20T17:17:45+00:00

There are so many trademark agents and lawyers that it’s difficult to choose the right one.

Here is why you should choose us:

  • We guarantee that a trademark professional will work on your file (not an assistant, not a paralegal, not a machine).
  • We offer flat fees. So your budget is predictable from the get-go.
  • File with confidence! If your trademark is refused, we’ll file another – fee excused.
  • The founder of Trademark Angel, Anita Mar, received the Canadian Education Foundation Prize for the highest results on the Trademark Agent examination in 2008. You say – no big deal? Only 25% of contestants pass the exam according to the statistics provided by Canadian Trademarks Office, and this 25 % includes those who write for the 2nd and 3rd time.
  • We offer the best price on the market. Don’t believe us? At Trademark Agent, you are covered by “Meet and Beat” guarantee. If you find a cheaper identical offer, we’ll beat it by 10%.
  • We offer amazing discounts for multiple marks. At Trademark Angel, we offer 20% discount for the 2nd trademark filing in the same country. Try and find a better deal! Most other law firms will give you 10% discount if you are lucky!
  • If you change your mind, no worries. We offer “I changed my mind” guarantee. If you have decided to become our client and changed your mind, a full refund will be offered within the first 48 hours (provided we haven’t started working on your application).
  • Do you need to incorporate first? We’ve got you covered. We offer incorporation services too – no need to go to another place. These services are provided through our partner, a great Canadian law firm that specializes in corporate law.
  • We offer 3 great packages. Most of them are packed with things you won’t find at any other law firm or trademark agency. For example, our Premium “Bells and Whistles” package, which is only $995, will cover assignments, writing of “cease and desist” letter, trademark strategy review, 3 years of trademark monitoring and unlimited consultations with a trademark agent. It also comes with free re-filing guarantee.
  • We understand that cash flow may be a problem, so we will offer a payment plan. If you are strapped for cash, we will consider barter. Our main goal is to make trademarking affordable to anyone.

You can trust us.

Drowning in trademarking sinking sands?
Let Trademark Angel
 lend a hand!

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How can I trust you? 2017-11-27T00:31:25+00:00

Anita Mar is a registered trademark agent authorized to practice before the Canadian and US Trademarks Offices.

You can check Anita’s status here, on the Trademarks Office website: http://www.ic.gc.ca/cipo/mc-tm/agents.nsf/tmagent-eng?readform&agent=21494

Anita has worked very hard to become a trademark agent and received the highest mark in Canada during 2008 qualifying trademark agent exam.

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What’s your hourly rate? 2017-12-02T10:04:07+00:00

My hourly rate is $90 (CAD).

You don’t need to worry about my hourly rate if you select “All In” or “Bells and Whistles” packages.

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Do you offer barter? 2017-06-09T16:18:23+00:00

Yes, we do. Our primary goal is to help startup companies. Please contact us for details.

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What is “I changed my mind” guarantee? 2017-06-09T16:15:48+00:00

Each of our packages comes with an “I Changed My Mind” guarantee.

If you have decided to become our client and changed your mind, a full refund will be offered within the first 48 hours (provided we haven’t started working on your application).

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What is “Meet and beat” guarantee? 2017-06-09T16:15:14+00:00

We are confident we offer the best price for a service we offer (trademark registration done by a registered trademark agent and not by a computer).

If you find a cheaper identical offer, we won’t only match it, we’ll beat the competitor’s offer by 10%.

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Should I file my different trademarks separately or combine them in one filing? 2017-11-26T03:50:10+00:00

Should I file my different trademarks separately?

Let’s say you have three different trademarks to register: your company name, your company logo, and your flagship product name. Since each trademark registration requires a separate application fee, this means you’ll need to pay this fee three times to get your company fully trademarked. This also doesn’t take into account your attorney’s or trademark agent’s legal fees. Sounds like a pain!

So, a trademark attorney that you’ve hired suggests that you combine filings. After all, if your company logo and company name always appear together, why not simply file them together as one trademark to save both time and money?

Do not let this shortcut tempt you. Combining filings like this might seem to make a lot of sense, but the complications that arise will only cost you in the long run.

The “combined” trademark can’t be separated

If you decided to combine filings, and the USPTO approves your registration, then you now own a trademark that can no longer be separated into its composite parts. If you combine your company name and company logo into one trademark, that means you can no longer display the company name by itself, or the company logo by itself, and be protected by trademark law. In short, you own trademark rights to the combined image (because that is how the USPTO approves it), but not to its individual components. That can mean a lot of headaches down the road if you ever plan on evolving or changing your company brand.

It may not be an issue now, but it can turn into one

Companies regularly change logos. It’s a sign to the public that the company is evolving, changing, and progressing with consumer needs. More so, design motifs and style often change over time, as well. Who knows if your logo is going to look antiquated and backward in ten years’ time?

So, after a few successful years, you think to update your company logo. You decide that having the product name visible along with the logo is no longer important (perhaps your company logo has grown ubiquitous!). But stop—you don’t actually own the trademark to your product logo. You own the trademark to the combined image of product name and logo, but because you filed them together, they cannot be separated and viewed while still retaining trademark status; that’s not the way trademark registration works, unfortunately.

What you would need to do: file one trademark to protect your product name, and then file yet another for the updated logo (since there is no trademark on the logo itself!). You combined filings to make things easier, not more difficult!

A real-world example: Many companies incorporate their names into the design of the logos themselves, like PepsiCo. Do you think that PepsiCo only registered the Pepsi logo as it appears on their soda cans? Of course not. PepsiCo owns the rights to all iterations of the Pepsi logo, as well as the word “Pepsi” itself and the phrase “Pepsi Cola”. If they had decided to file the “Pepsi” name and Pepsi logo as one unique trademark, their ability to police the use of these iterations (in both name and logo) would be greatly limited.

In short, combining trademark applications might save money in the short-term, and it might even get around any problems that your separate trademarks (company name or trademark logo) are facing to get approved.

However, combining these elements together binds you over time—you are now limited in how you can use your logo and company or product name, and you’ll need to refile for a new trademark registration if you ever decide to change something like your company logo. Don’t get strung up by these issues that can be avoided from the very start!

However, you might be encouraged to combine trademark filings if the following is true:

  • One of your trademarks can’t be registered by itself due to competing trademarks, or
  • Your trademark is descriptive and thus cannot be registered by itself

If these exceptions don’t apply to you, then save the stress of trademarking complications by ensuring you file your trademarks separately!

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When and how can I use my trademark symbols? 2018-01-20T21:15:24+00:00

In Canada, there are no marking requirements.

However, it’s wise to use them to indicate ownership of your trademarks.

Trademark owners can indicate ownership or registration of their trademark through certain symbols, TM (trademark) or ® (registered trademark).

The TM symbol can be used with a trademark regardless of whether it is registered, as long as it is being used in association with products or services. TM symbol is used to indicate that you use your brand as a trademark. When I use TM symbol for my trademark, that makes no claims as to its registration status.

The ® symbol is used once the trademark is registered.

In the US, use of the federal registration symbol is regulated by federal law. One should only use ® symbol for federally registered trademarks.

How should you use trademark symbols?

In written documents (on your website, promotional materials or articles), it is only necessary to use a marking symbol when you mention your trademark for the first time or with the most prominent placement of your trademark (for example, in the header or title).

Most people mistakenly think that you have to use marking symbols every time you mention the trademark. Using marking symbols too much makes it more difficult to read your materials, so don’t overuse.

P.S. How do you type TM and ® symbols?
Easy, if you have Windows, simply press ALT+0174 to get ® and ALT+8482 or ALT+0153 to get TM.

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Trade name vs. trademark 2017-12-29T23:08:15+00:00

A trade name is a name under which you conduct your business. A trade name can act as a trademark if it is used to identify goods and services of that business.

Example: let us suppose that you sell headphones and your company is called “To The Moon Headphones Ltd.”

Scenario A: Customers come to you because they know your name “To The Moon Headphones Ltd.”. You use your company name as a trademark and you place it on your headphones or packaging. In this case trade name vs trademark, your company name is also your trademark.

Scenario A: Customers come to you because they like your headphones which you have called “Blue Rocket”. This is how you advertise and sell your headphones. Even though the name of your company is “To The Moon Headphones Ltd.”, nobody associates this name with your headphones. In this case, your company name is not a trademark, but your product name is a trademark.

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What are clearly descriptive trademarks? 2017-12-24T10:38:23+00:00

Not all trademarks can be registered.

Descriptive trademarks are not registrable in Canada.

One may not register a word that describes a feature of the products or services.

Clearly descriptive marks consist of dictionary words (or their phonetic equivalents) and describe characteristics of your product or service.

The reason clearly descriptive trademarks cannot be registered is to prevent a business from appropriating common dictionary words that describe important characteristics of its products and services, which would place its competitors at a significant disadvantage.

Some examples of clearly descriptive marks: FRESH MEAT for meat, ULTRA CLEAN for laundry detergent, OKANAGAN for grapes, SWISS for cheese, FAST AND ACCURATE for transcription services.

If you were allowed to register these words, no other business would be able to use these words to promote their goods and this would be unfair.

There is one exception:  if you can establish that your descriptive trademark has become so well known that people think of your product (and no one else’s) when they hear the words, you might be able to register the trademark. Think about BEST BUY – it is so famous that people would actually think about a store rather than “best deal”.

Question: What if I put my descriptive mark in a stylized font? Will my descriptive mark become registrable?

Answer: No. If your word mark is descriptive in block letters simply putting it in stylized form will not help. This is because a mere embellishment of the letters comprising the words cannot be dissociated from the words themselves.

Canadian Jewish Review Ltd. v. The Registrar of Trade Marks (1961) 37 CPR 89 (ExC) adopted.

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My trademark is descriptive. What should I do? 2017-12-24T19:13:31+00:00

Descriptive trademarks are not registrable in Canada. So if your trademark is descriptive and you are filing in Canada, it’s best to come up with another name.

In the US, they may be registered on the Supplemental Register – a special place where descriptive trademarks are registered.

The Supplemental Register does not cover the same legal bases of the Principal Register, but it is capable of legally distinguishing your business’ goods and services and offering you protection.

We discuss Supplemental Register in detail in our article.

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What is a trademark? 2017-12-11T21:37:20+00:00

Everyone knows the word but not everyone really knows what it means.  A trademark is a word, symbol, logo, tagline or any combination used in association with products or services.

A trademark may even be a particular smell, texture, sound or color!

A trademark distinguishes the products or services of one person or company from those of others in the marketplace.

A trademark prevents another person or company from offering a confusingly similar product or service. So a trademark protects your brand.

It also represents the reputation of the provider of such products and services.

It’s important to note that having a logo doesn’t give you an absolute monopoly over a word(s) or tagline. Instead, it gives you a monopoly over a mental link between that word(s) and the products you sell or services you offer.

Trademarks are a shortcut to get consumers to where they want to go.

You can also think about a trademark as a lighthouse acting as a guide to consumers of a product or service.

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What kinds of trademarks aren’t registrable? 2017-12-11T21:42:04+00:00

In Canada, some trademarks are not registrable under the Trademarks Act.

Let’s go through them:

  • clearly descriptive marks, those that describe the character or quality of the goods or services being offered or of their place of origin

Example: SUPER GROW for fertilizers

Exception: Clearly descriptive trademarks may be registered after a period of extensive use. A good example is MCDONALDS.

In the US, descriptive marks can be registered on the Supplemental Register if a trademark is already in use in the US.

 

  • deceptively misdescriptive marks, those that would mislead consumers as to the character or quality of the goods or services being offered or of their place of origin. To be deceptively misdescriptive a mark must first be clearly descriptive and then deceptively describe the products.

Example: ALL BRAN for cereal that does not contain any bran.

 

  • full names and last names of living or recently deceased people and names of famous people.

Examples: BRAD PITT for entertainment services, JONES for accounting services.

Exceptions:

CHARLIE CHAPLIN for shoes would be registrable as he died more than 30 years ago.

ELDERS for wine may be registered as it has another meaning.

In the US, a name can be trademarked with the consent from the owner. If a name is invented, you simply have to state that it’s a coined name.

 

  • the name in any language of any of the goods or services in connection with which the trademark is used

Example: VINO ROSSO means RED WINE in Italian. Since it’s a name of the product in Italian, the trademark is not registrable.

 

  • various governmental symbols and phrases (like national flags, the arms, crests, emblems)

 

  • Scandalous and immoral marks

Example: DICK HEAD for restaurant services; JACK-OFF for adult entertainment

 

  • Marks that suggest government approval

Example: Josie’s Government approved – for car emission testing services

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What does “using a trademark in Canada” mean? 2017-12-18T23:23:56+00:00

Use is essential to registration and to the maintenance of your trademark. You can’t register your trademark in Canada and the US if you don’t use it. In many other countries, you need to use the trademark after registration to make sure it’s not challenged and canceled for non-use.

In Canada, using the trademark for goods (products) is simply selling your products with your trademark being displayed either on the actual products or on their packaging during the sale.

Using for services is simply advertising of the mark in Canada and the services must be performed in Canada, or be available to be performed in Canada.

To open in a new tab, click: What does “using a trademark in Canada” mean?

To open in a new tab, click: What does “using a trademark in Canada” mean?

What is use in commerce (in the US)? 2017-12-29T23:04:14+00:00

In the US, trademark use is essential to register your trademark and to maintain it. Without use, there will be no registration and without a use after registration, your trademark may not be maintained.

Using for goods (products) is actually selling your products with your trademark being displayed either on the actual products or their packaging during the sale.

Using for services in the US is actually advertising and performing the services in the US in more than one state or in the US and a foreign country

Important points:

Use must be “bona fide” – real sales to real customers. “Token use” is not acceptable.

Use must be in the ordinary course of trade – that means that goods and services must be used in a way which is typical in a particular industry.

Note: the US law says you need to use the trademark in interstate commerce. That means that when you sell your products they need to be sold and shipped to another state or to a foreign country.

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What is a priority claim? 2017-12-14T20:32:58+00:00

If one company or person applies for a specific trademark for the first time in any country, and then, within the next six months, files an application for the same trademark in another country and claims priority, then the second trademark application will have the same filing date as the first filed application.

For example, if a company filed a trademark on June 10, 2017 in Canada for the trademark TRADEMARK ANGEL and later filed an identical application in the US on November 10, 2017, then the US application will have the same filing date as the Canadian application, i.e. June 1, 2017. For examination purposes, it will be considered as if it was filed on June 10, 2017. If another entity filed TRADEMARK ANGEL application between June 10 and November 10, this other TRADEMARK ANGEL trademark will be refused by the Trademark Office.

 

Question: If you fail to claim priority within the 6 month window from the initial filing date, can you add a priority claim later?

Answer: No. The 6 month priority date cannot be extended.

 

Question: Can you claim priority from the first filed application if the second application is not identical?

Answer: It depends. The second filed application may exclude some goods and services contained in the first application but it cannot be broader.

 

Question: What will you need from me to claim priority?

Answer: We will need a copy of the first filed application, its serial number and filing date (or registration date, if it’s already registered). Also, we will need to know whether the trademark is already in use in any country. If in use, we’ll need to know where it’s being used.

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What’s required in order to file a trademark application in the US? 2017-12-14T20:41:46+00:00
  • The full legal name of the applicant (either your company or your personal name)
  • State of incorporation (if filing in your company name) or citizenship (if filing in personal name)
  • The full address of the applicant.
  • The telephone number and email address (not required).
  • The trademark name. If you are filing for a logo, we need to see the logo.
  • The products which you sell or plan to sell under your trademark (provide a list).
  • The services which you offer or plan to offer under your trademark (provide a list).
  • Whether the trademark been used in the US: yes/no. If yes, the date of first use (sale) in the US for each product and service.
  • Specimens of use if your trademark is already in use. Specimens of use are photos of your products with your trademark clearly shown either on the products themselves or their packaging. Specimens of use for services can be a screenshot of your website where your trademark is clearly seen.

To open in a new tab, click: What’s required in order to file a trademark application in the US?

What’s required in order to file a trademark application in Canada? 2017-12-29T23:18:19+00:00
  • The full legal name of the applicant (either your company or your personal name)
  • The full address of the applicant.
  • The trademark name. If you are filing for a logo, we need to see the logo.
  • The products which you sell or plan to sell under your trademark (provide a list).
  • The services which you offer or plan to offer under your trademark (provide a list).
  • Whether the trademark been used yet in Canada: yes/no. If yes, the date of first use (sale) in Canada for each product and service.

To open in a new tab, click: What’s required in order to file a trademark application in Canada?

Do you need a power of attorney from me? 2017-07-19T02:10:21+00:00

No, we don’t need a power of attorney to file your trademark application in Canada or the US.

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How do I lose my trademark protection? 2017-12-25T20:40:49+00:00

You may lose trademark protection when the mark no longer distinguishes your product or service from those of competitors. When it happens your trademark will become generic).

Don’t let your trademark become a generic term such as escalator or nylon.

Instead always put a registered trademark symbol and use a generic term after the trademark name:  Kleenex® tissue and Xerox® printers.

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How to select a great trademark for your business? 2017-06-24T12:30:12+00:00
What is the Canadian trademark registration process? 2018-01-08T21:38:44+00:00
Should I claim color as a feature of the mark? 2017-12-24T15:15:23+00:00

When you file your logo in black and white, you may use your logo in any color. When you file your logo claiming color, you must use your logo in those colors.

A color claim is a limitation, which otherwise confers on the owner the exclusive right to use the mark in any color. Therefore, a color claim narrows down the protection for a mark and it is usually advisable to include such a claim only when a particular color is considered to be an important and essential feature of the mark.

In addition, a trademark logo in color is usually not the first trademark that should be filed. If an applicant files a first trademark, it’s best to file a word mark in standard characters. Such a trademark will allow the owner to use its trademark logo in any font and style. After a word mark is filed a trademark logo should be considered for filing. Of course, it may be filed at the same time as the word mark if finances allow.

Only after the word mark and the logo in black and white are protected, should a logo in color be protected if necessary.

What’s the bottom line? Unless color is an essential element of your trademark logo, don’t file in color.

Read our article for a full discussion about color claims.

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What is trademark monitoring (confusion watch) service? 2017-12-02T10:00:30+00:00

We offer confusion watch service as a bonus if you buy our “All In” or “Bells and Whistles” packages.

What is it?

Every month, we will search the Trademarks Office database of the country where we filed your trademark.

The service covers newly and previously filed trademark applications with the Trademarks Office. If we find a trademark that is similar to yours, we will promptly let you know.

Why do you need to know about similar trademarks?

You should be the first to know if somebody filed a similar mark. This will allow you to decide if you want to want to send them a demand letter, keep monitoring to see if the Trademarks Office rejects the confusing application, oppose the confusing application if it’s approved by the Trademarks Office, or ignore it if you don’t think it’s causing confusion with your brand.

You may say: “The Trademarks Office will reject a similar trademark anyway, so I don’t need this service”.

Yes, and no. Your competitor may do a lot of damage in a short period of time (advertising their confusingly similar trademark, luring your customers, causing confusion).

Also, sometimes the Trademarks Office makes a mistake and approves a confusingly similar mark. If this happens, you will need to oppose. And if you miss a short period of time during which oppositions can be filed, then this confusingly similar mark will register and you will need to go to court to stop them.

The cost of trademark monitoring service is usually around US$250-300 for a year. It becomes a valuable FREE bonus if you buy “All In” or “Bells and Whistles” package.

With our “All In” package you get free trademark monitoring for 1 year.

With our “Bells and Whistles” package you get free trademark monitoring for 3 years.

You can also buy one year of trademark monitoring from us at a discounted rate of C$225 per trademark per country.

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What are the benefits of registering a trademark? 2017-12-14T20:43:54+00:00

There are so many benefits that it’s hard to list all, below are just a few.

  1. Registration provides the owner with exclusive rights to use the mark in Canada for 15 years and in the US for 10 years. Registration is renewable every 15 years in Canada and every 10 years in the US after that. The owner of an unregistered mark has protection within a confined geographic area where he enjoys an established reputation and goodwill.
  2. A registered trademark is a valuable asset of your company and can be sold or licensed. It also increases the value of a company.
  3. A registered mark will create a presumption that the trademark is distinctive, valid and owned by the registered owner. If there is ever a dispute about the mark, the burden of proof will lie on the party challenging the registered mark.
  4. Your trademark may become incontestable 5 years after the registration the trademark. This will help to eliminate most arguments that the owner does not have the exclusive rights to the trademark.
  5. A Canadian trademark registration allows for registration of a corresponding .ca domain name (fulfills “Canadian Presence requirements”) for non-Canadian brand owners.
  6. Trademark registration provides a ground for an opposition in case you need to challenge your competitor’s trademark.
  7. Your registered trademark serves as public notice that its owner has exclusive right to use the mark in Canada (or the US). Trademark registration often deters others from using a mark that is the same or similar.
  8. A registered trademark facilitates lawsuit as suing for infringement is generally easier than suing for passing off.
  9. Trademark registration can be used as a basis for obtaining registration in other countries.
  10. Registration may be filed with the Customs Service to prevent importation of trademark infringing foreign goods.
  11. If you are an Amazon seller, a trademark registration will enable you to get into the Amazon Brand Registry (check out our article about that).

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Do you offer a payment plan? 2017-06-09T16:17:46+00:00

Yes! Payment plans are offered on most our packages.

Contact us for details.

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What should I protect? 2017-12-12T15:36:10+00:00

We suggest protecting your company, product or service name and your logo. In this case, two trademarks are typically needed, and that can get expensive.

Unlike other companies, we offer a 30% discount for the second trademark. If you file more than two, the discounts are even better!

Need to register more trademarks? Contact us for volume discounts.

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Where should I register? 2017-12-12T15:33:38+00:00

To start, we recommend registering your trademark in the country where you sell your products and offer your services. If you are an e-commerce company, we suggest registering in the country with which you do the most business. If you are a Canadian company, we highly recommend starting with the Canadian application and if you are a US business, filing in the US first will probably be the best choice.

We can file your trademarks for you in Canada, US, and the European Union and will use foreign associates for other countries. As we have a good working relationship with them, we will be able to pass the discount to you.

Limited budget? Start with filing your trademark in your country of origin, and then file in other countries of interest within 6 months of the first application using conventional priority. What does it mean – if you are a US business, file in the US first and then in other countries within 6 months from the filing date.

Lastly, if your budget only allows filing a single application, we recommend filing a trademark in your country of origin.

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Why is trademarking so expensive? 2017-06-09T16:14:36+00:00

When registering a trademark, a large portion of the fee goes towards the agent’s hourly pay.  Your fees also pay for the agent’s rent, advertising, staff and office equipment. Being that we are a small company, we’ve taken every opportunity to cut our costs in order to pass savings to you. We’ve taken the necessary steps to provide you with the best prices.

In today’s market, you have to be very competitive, and our rates help us stand out. We noticed that most companies charge $800-1200 for trademark filing and way over $2000 for each all-inclusive trademark registration and decided to offer our services at a quarter of industry prices.

All applications are reviewed by a registered trademark agent to ensure the highest level of quality.

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Why are your prices so cheap? Where is the catch? 2018-01-20T17:42:30+00:00

There is no catch!

Despite what you may think, trademark registration does not have to be expensive. We do everything we can to provide you with the best rate possible. As we are a small firm, we don’t have overhead that traditional law firms have like rent, office expenses and staff.

At Trademark Angel, we believe you either have to be twice as good or half the price.

Our service is already as good as it gets, so we checked the industry average and sought to charge a quarter of what other companies do. Our goal is to make trademark registration affordable.

Unlike other firms, we also offer 20% if you decide to file a logo or a 2nd trademark in the same country. At best, our competition offers a 10% discount.

 

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Can I pick somebody else’s registered trademark for use? 2017-12-29T22:58:42+00:00

If you pick somebody else’s trademark and use it to market and sell your products or services, it may be considered trademark infringement.

Trademark infringement is a strict liability offense. What this means is that whether you intended to infringe or not is irrelevant.

For example, if you didn’t know that there was a registered trademark and used it to market your products, hence, you infringed on a registered trademark and you are liable. Also, if you believe your use of somebody else’s trademark is fair use, but it isn’t, you’re liable.

Lesson to learn: always do a proper trademark search before selecting a trademark for use and registration!

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Can I use a trademark if it has been cancelled, abandoned or expunged? 2018-01-15T14:57:05+00:00

It depends.

Even if a trademark is expunged, it doesn’t mean it’s no longer in use. If the trademark in question is still used by the owner, then he/she may still have common law rights. That means that when you file your trademark application, once it’s published for opposition purposes, the owner of the expunged registration may oppose registration of your mark on the ground of prior use. And he may win!

If you use your trademark without filing for a trademark, then it’s still possible for the owner of the expunged trademark to sue you, again on the grounds of prior use.

If the expunged mark is no longer in use, then you should be safely provided there are no other confusingly similar marks.

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