Trademark Primer

What are the steps and costs involved to register a trademark?

Registration Process

The registration process is initiated by filing a trademark application at the Canadian Intellectual Property Office. The Trademarks Act sets out a variety of grounds for trademark registration. It is important to ensure that a trademark application is based on the proper ground(s) for registration. Otherwise, the resultant trademark registration may be invalid and unenforceable.

An examiner evaluates the application by conducting searches for identical or potentially confusing trademarks, and assesses other potential obstacles to registration. If the examiner raises no objections, the application is approved for publication in the Trademarks Journal. For a two-month interval after publication, the application may be opposed by another person. Oppositions, which are relatively uncommon, may for example be based on prior use of a confusing trademark.  If no opposition is raised, the application will be allowed.  To complete the registration process, a registration fee must be paid.  If the application is based on intent to use the trademark in Canada, then it is also necessary to declare actual usage before registration can occur.

It typically takes 12 to 16 months to “prosecute” an application through all of the stages, assuming that there are no examiner’s objections, no oppositions are filed against the mark, and no extensions of time are requested by the applicant. Prosecution of an application typically consists of responding to any requirements or objections that may be raised by a trademarks examiner, paying registration fees, and complying with formal requirements for the trademark registration to be issued.

Cost

The initial cost of filing an application to register a trademark is about $1,350 for an application covering one class of goods or services, with further costs on the order of $650 being incurred later in the process for a straightforward application.  A straightforward application means that there are no objections raised by the trademarks examiner, no oppositions are lodged by third parties, and no extensions of time (e.g. to respond to examiner objections or to meet other formal requirements) are required.

Costs relating to dealing with examiner objections are highly variable and depend upon the number and complexity of the objections.  We can discuss with you in advance of filing the costs that might be incurred in your particular case, but we cannot know in advance what objections will be made to an application, and so there is always some uncertainty in this regard.  Opposition proceeding are adversarial proceedings conducted before an administrative tribunal called the Trademarks Opposition Board, so costs are difficult to predict in advance.