FROESE LAW
TRADEMARKS LAW
We live in a branded world. Without a strong robust brand, your company will not successfully penetrate the marketplace. Trademarks are the foundation of the brand and a significant corporate asset. Our Expert Trademark Lawyers devise strategies that enable your business to carve out a branded monopoly in the marketplace through trademark law. We handle trademark matters, including prosecution and enforcement, manage global brand portfolios, negotiate and draft brand-related agreements, and represent in trademark cancellations and opposition proceedings.
Our Toronto Trademark lawyers have extensive experience with -
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Trademark availability and registrability searches
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Trademark applications and registrations
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Worldwide trademark portfolio management
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Trademark audits
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Trademark opposition proceedings
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Trademark cancellation and expungement proceedings
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Trademark license agreements
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Trademark infringement
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Cease and desist letters
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Online infringement
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Take down notices
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Madrid protocol
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International trademark applications
FROESE LAW SERVICES
What is a trademark?
In simple terms, almost anything! A trademark may comprise, alone or in combination, word(s), numbers, slogan, designs, symbols, sound, hologram, moving images, taste, colour, texture, mode of packaging, 3-D shapes and/or positioning of a sign, which are used by an entity to identify the source of its products or services from others in the marketplace.
FREQUENTLY ASKED QUESTIONS
Why Register a Trademark?
Given that the trademark is a significant corporate asset of the entity, the prudent business approach is to register the trademark. There are significant advantages to registering a trademark, such as:
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Prima facie evidence of ownership
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Exclusive ownership rights across Canada
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10 year renewable registration periods
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An elevated platform from which to assert your rights across brand trolls and infringers
How long is the registration process?
It can take between 18 months and 3 years to obtain a trademark registration in Canada. This includes all steps from filing the trademark application through to obtaining the trademark registration. This estimated time frame depends upon the level of complexity of issues raised during the application process. (i.e. was an opposition lodged, were significant issues are raised during examination). The delay in obtaining a trademark registration does not affect the entity’s ability to use the trademark in Canada.
What is Canada’s Trademark System?
It is important to note that not all trademarks can be registered in Canada – the Canadian Trademarks Act contains some prohibitions. For example, an entity cannot register a trademark that is (a) clearly descriptive or (b) the name of the wares/services in any language or (c) primarily merely a name or surname or (d) confusing with a previously registered/applied for trademark. However, in some instances, these are not absolute bars and arguments can be made as to the registrability of the trademark. For this reason, it is prudent to discuss the usability/registrability of the trademark prior to embarking on a branding campaign.
How Does a Trademark Differ from a Trade Name and/or Business Name?
Trade names and business names simply identify the business. The available causes of action that can be used against an infringing party by a trade name/business name owner are limited, as opposed to those available to the owner of a registered trademark. The function of a trademark goes beyond the scope of a trade name/business name to identify the company as the source of the product/service in the marketplace.
Do I need to check Trademark Availability and Registrability Searches?
Although not mandatory, it is prudent to conduct trademark availability and registrability searches prior to embarking on the registration process. This is particularly relevant for the launch of new brands. The trademark search will determine whether there may be challenges that could pose an obstacle to your company’s registration and/or use of the trademark. As mentioned above, not every trademark is capable of registration. Also, the search is important as we can determine whether another entity is already using a trademark that is identical or similar to your company’s trademark.
What if I get a cease and desist letter?
These types of letters are usually sent as a warning and should not be ignored. The letter informs the recipient that they have allegedly infringed the sender’s intellectual property rights, and asks them to stop their actions immediately. The letter warns the recipient of potential legal action if they do not comply with the order. Nonetheless, it is important to contact a trademark lawyer to better review these types of letters as sometimes the Sender may have incorrect facts and/or information.
Contact the Trademark Lawyers at Froese Law
Froese Law is an award-winning cross-border branding, corporate and commercial law firm. Our team of lawyers and legal professionals are dedicated to structuring your business, negotiating your contracts and protecting, enforcing and commercializing your brand. Contact us today for a free consultation!