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, a sound, a melody or a unique interior design. In some cases, sensory marks like a colour, a motion or even a fragrance may qualify for protection like a trade-mark.
- File and prosecute trademark, certification mark, official mark and geographical indication applications in Canada and the United States.
- Prepare, review and negotiate trademark licenses and assignments and manage recordal of such assignments and licenses, when necessary.
- Manage international corporate portfolios of trademark applications and registrations.
- Send cease and desist letters regarding alleged instances of trademark infringement.
- Represent parties in litigation involving allegations of trademark infringement and "passing off".
Useful Information to Provide Legal Counsel:
- Proper legal name of trademark owner and address.
- 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.
- Identification of the mark.
- If the proposed mark is a graphic design, a 7cm x 7cm black and white representation of the mark on white paper.
- If colour is a feature of the mark, a colour copy of the mark.
- 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.
- If sales have already commenced in association with the mark in the United States, the approximate date (ie. month and year ) of the first sale and, if applicable, the first advertisement.
- If application is to claim priority from a corresponding foreign application, particulars with respect to this foreign filing.
- Copies of any related co-existence agreement, letter of intent, memorandum of understanding, term sheet or discussion sheet.
- Copy or photograph of any allegedly infringing trademark and identification of the wares or services associated with it.