What is the trademark registration process?
The first step of any branding strategy, and certainly before filing a trademark registration application, should always include a search for similar trademarks being used with similar or overlapping goods and services.
This leads to the question of whether searching the trademark office online database is enough. The short answer is probably no. Searching for other marks requires not only looking for exact matches but also marks that are similar visually, phonetically, and similar in commercial impression.
Filing of Application
The next step is to file a trademark application and pay the applicable fees to the governmental department responsible for the trademark register. In Canada this is the Canadian Intellectual Property Office (CIPO), and in the US this is the United States Patent and Trademark Office (USPTO).
Assigned to Examiner: After several months the application is assigned to an examiner who will review the application to determine if the application complies with all technical requirements. The examiner also conducts a search of the trademark register to determine if there are any conflicting registered marks or application in the queue.
If any issues are raised by the examiner, an office action letter will be sent to the applicant (or the trademark agent/attorney) with an opportunity to respond to the issues raised.
Publication for Opposition
If and when all issues are resolved, then the application will proceed to publication for opposition. The publishing of the mark provides any third party the opportunity to oppose the trademark application. Typically, this happens if an owner of a mark believes the trademark is similar to their mark in a way that could cause confusion as to the source of the goods or services associated with the mark.
If no opposition is made to the application, then the trademark will proceed to registration.
To learn more about trademark registration, stay tuned for the final installment of our 6-part series on trademark law. You can also contact us at 604-888-4200 or Dawn Deans at Kickstart Law Corporation at dawn [at] kickstartlaw [dot] com.