Trademarks

Definitions:

A trademark is a means used to distinguish the goods and services of one business from its competitors in the marketplace. In Canada, a trademark may be registered for one or more words, a graphic design, a signature, a slogan, a three-dimensional object, a unique form of packaging or a unique interior design.

In some cases, sensory marks like a colour, a melody, a sound, a motion or even a fragrance may qualify for protection like a trade-mark. Although they may not be considered registrable trademarks in Canada in all cases, many sensory marks are considered registrable in the United States.

Examples of Trademarks Registered in Canada:

Available services:

1. File and prosecute trademark, certification mark, official mark and geographical indication applications in Canada and the United States.
2. Prepare, review and negotiate trademark licenses and assignments and manage recordal of such assignments and licenses, when necessary.
3. Manage international corporate portfolios of trademark applications and registrations.
4. Send cease and desist letters regarding alleged instances of trademark infringement.
5. Represent parties in litigation involving allegations of trademark infringement and “passing off”.

Useful Information to Provide Legal Counsel:

1. Proper legal name of trademark owner and address.
2. Proper legal name(s) of all previous owners or users of the mark in Canada before it was sold or assigned to the applicant and copies of any related agreements, if any.
3. Identification of the mark.
4. If the proposed mark is a graphic design, a 7cm x 7cm black and white representation of the mark on white paper.
5. If colour is a feature of the mark, a colour copy of the mark.
6. Description of wares and services already sold in association with the mark in the past as well as any wares and services that may be sold in association with the mark in the future.
7. If sales have already commenced in association with the mark in Canada, the approximate date (ie. month and year ) of the first sale and, if applicable, the first advertisement.
8. If mark to be filed on the basis of a corresponding foreign application or registration, a copy of this application/registration or particulars with respect to this filing.
9. Copies of any related co-existence agreement, letter of intent, memorandum of understanding, term sheet or discussion sheet.
10. Copy or photograph of any allegedly infringing trademark and identification of the wares or services associated with it.

The content of this page is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

 

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