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You are a social media content creator, and you have a trademark that is associated with your business. You have read Registration of a Trademark and have decided to submit an application to register your trademark. What happens next?
Initial Steps and Subsection 33(1)
Most trademark applications are filed electronically through the Trademark e-filing application. Once they are submitted, the Incoming Correspondence Unit of the Trademark Office (the “Office”) transfers the e-filing application to the Formalities Section, which then assigns the application with a number.
The Office will then provide a filing date if the application meets the filing requirements under subsection 33(1) of the Trademarks Act.
33(1) The filing date of an application for the registration of a trademark in Canada is the day on which the Registrar has received all of the following:
(a) an explicit or implicit indication that the registration of the trademark is sought;
(b) information allowing the identity of the applicant to be established;
(c) information allowing the Registrar to contact the applicant;
(d) a representation or description of the trademark;
(e) a list of the goods or services for which registration of the trademark is sought;
(f) any prescribed fees.
These initial steps ought to be met if you filled out the forms correctly in the application process. If you have met these requirements, then the application is now formalized and entered into the trademarks database. Receipt of the application is acknowledged, which is then sent to you. The Formalities Section then transfers your application to the Examination Section where it is searched and examined.
Examination according to Section 30
This Examination Section of the Office will begin with an examination of your application according to ss. 30(1) (read more about the changes s. 30 has undergone). Subsection 30(1) states that a person may file with the Registrar an application for the registration of a trademark in respect of goods or services if they are using or propose to use, and are entitled to use, the trademark in Canada in association with those goods or services (emphasis mine).
This initial examination is more of less a formality, unless you have indicated on your application that you have never used the mark, have no intention of using it, that you are not entitled to use it, or that it is not associated with any goods and services.
Following this “pre-examination”, the Office will then perform a more detailed review of your application to ensure that it aligns with subsection 30(2).
30(2) The application shall contain
(a) a statement in ordinary commercial terms of the goods or services in association with which the trademark is used or proposed to be used;
(b) in the case of a certification mark, particulars of the defined standard that the use of the certification mark is intended to indicate and a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those in association with which the certification mark is used or proposed to be used;
(c) a representation or description, or both, that permits the trademark to be clearly defined and that complies with any prescribed requirements; and
(d) any prescribed information or statement.
When you submitted your trademark application, you were required to provide a statement in ordinary commercial terms of the goods or services in association with which your trademark is being used. This step generally means using the Nice Classification categories and sub-categories to identify the goods or services in association with your trademark. In addition to this information, you were also required to provide a representation or description (or both) of your trademark. The specifics of this requirement depends on the type of mark. For example, a design mark will generally require a representation, where a word mark will require a description.
As the Office is evaluating your trademark according to ss. 30(2), the Office will also perform searching of your trademark to ensure that it is not confusing with another registered trademark or pending application trademark (See section 16). The Office will also consider whether the trademark is registerable, including its distinctiveness (See section 2 and section 12, and for a more in-depth discussion on these sections see Registration of a Trademark).
Once the Registrar finishes its initial examination, it will then produce an Examination Report. This Examination Report is considered the “first action,” and it ought to list and address all (if any) defects in your application before your application can proceed to the next step.
At this stage, the Office can refuse your application for registration for the reasons enumerated in section 37.
37 (1) The Registrar shall refuse an application for the registration of a trademark if he is satisfied that
(a) the application does not conform to the requirements of subsection 30(2)
(b) the trademark is not registrable,
(c) the applicant is not the person entitled to registration of the trademark because it is confusing with another trademark for the registration of which an application is pending, or
(d) the trademark is not distinctive.
If the Office does refuse your application on these grounds, you may reply in writing why you believe the Office’s objection is incorrect. The reply must be based on the statutory scheme of the Trademarks Act and must be in response to the reasons provided in the objection. For example, if your trademark was rejected because it was not distinctive, you must explain and provide evidence why it is distinctive (See section 32) Or, if you did not provide the proper description of goods for your trademark, you can amend the application to include the correct description. If you cannot satisfy the Office that the application should proceed, then the Trademarks Office will issue a final letter indicating its decision to refuse your application.
However, if the Office completes the initial examination process and it is satisfied that the trademark is registerable, then the Office will then advertise your application in the Trademarks Journal. You must note that between the period of time when the Office’s duty to advertise vests and the time when the publication of the advertisement actually occurs, the Office may still reverse the decision to schedule the advertisement if facts have arose which would warrant a refusal to register under section 37.
Have you submitted an application to register a trademark and received a Trademark Examination Report? Do you need advice on how to respond? Andrew Roy is a Trademark Agent that can help you protect your rights. Call us today at 587.896.2769 or book a free, no obligation Zoom consultation
The information in IP Legal Iteration is not legal advice and does not establish an attorney-client relationship.
© 2022 Andrew Roy