Services : Trademarks

Do you have a product or a service that your customers identify by the name, logo or some other characteristic? This is your trademark. The purpose of trademarks, whether registered or unregistered, is to distinguish products and services of one business from products and services of all other businesses.

Trademarks are valuable assets. You should protect what’s yours. You should also expect others to guard what’s theirs.

Registration of Trademarks

If at least some of your customers find you because of your trademark, you should consider registering it. This is especially so if you ever plan on franchising your business.

Registration of trademarks provides many significant benefits to businesses over unregistered (common law) trademarks:

The term of registration is 15 years, renewable for an unlimited number of times.

It is important to note that Canada does not adhere to the Nice Classification. Neither is it a party to the Madrid Agreement or Protocol. What this means is that it is insufficient to simply state that you want the TM registered in certain Classes. You should provide “a statement in ordinary commercial terms of the specific wares or services in association with which the mark has been or is proposed to be used”.

Also, Canada's trademark registration system revolves around the concept of use. Without use, there is no registration.

Unless you have already built some goodwill around your trademark or your trademark is totally unique, we recommend conducting a comprehensive search and obtaining a registrability opinion before you apply for registration of a trademark. This is not done to save you the cost of registration, but to save the expense of investing in a mark that cannot be registered.

Other Trademark Services

Besides registration, Mincov Law Corporation provides a wide range of services relating to trademarks. You may expand each individual entry by clicking on icons. You may also expand or hide them all.

• Trademark searches;

  In most cases, trademark applicants should conduct a trademark search to make sure that the trademark that they are about to apply for had not been previously registered for the same goods or services by someone else.

  The search can be very narrow and only include registered word trademarks, or it can be comprehensive and cover registered trademarks, common law trademarks, tradenames and domain names, or it can be somewhere in the middle.

  We usually quote a project fee for trademark searches that depends on three variables: (1) the depth of the search required; (2) the urgency of the request; and (3) whether or not you require a detailed opinion that explains the search results.

• Legal opinions on registrability of trademarks;

  Registrability opinions are usually made up of two parts: (1) whether the trademark itself is registrable if there were no identical or similar third party trademarks; and (2) whether it can be registered taking into account such prior trademarks.

  Among other limitations, the Trade-Marks Act provides that a trademark is not registrable if it is (a) the name or the surname of an individual who is living or has died within the preceding 30 years; (b) clearly descriptive or deceptively misdescriptive of the character or quality of the goods or services; (c) the name of the goods or services in any language.

  Depending on the client’s sophistication in trademark issues, the opinion may range from a very detailed multi-page report to a brief overview with a yes-or-no conclusion.

• Trademark opposition proceedings before the Trade-Marks Opposition Board;

  After a trademark application is advertized in the Journal, any person may file a statement of opposition, thus claiming that the trademark should not be registered.

  After an extremely time-sensitive and highly formalized exchange of documents and evidence, the dispute is resolved by the Trade-Marks Opposition Board. The decision is made based on written arguments, unless at least one party requests an oral hearing.

  Mincov Law Corporation assists both trademark applicants in defending their trademark applications and opponents in attacking other parties’ applications.

• Proceedings regarding cancelation of registered trademarks for non-use;

  After a trademark has been registered for over 3 years, any person may file a written request asking the Registrar to commence proceedings to remove the trademark from the register (“expungement proceedings”).

  The trademark owner must then provide proof and evidence of at least some use of the trademark in the preceding 3 years.

  If the trademark owner fails to provide convincing evidence of such use, the trademark will be expunged – in respect of all or some of the goods or services for which it was registered.

  Mincov Law Corporation assists both trademark owners in defending their trademarks and parties interested in clearing out the “dead wood” from the register.

• Drafting and review of trademark license agreements and assignments;

  Often trademarks are used by entities other than the one in whose name a trademark is registered.

  The change of ownership in respect of a registered trademark is done with an assignment which must be the registered with the Registrar of Trade-Marks.

  If the intention is allow a third party (which may or may not be related to the trademark owner) to use the trademark without changing the identity of the trademark owner, a license in needed. While license agreements may be oral, it is strongly recommended to enter into written licenses detailing the terms of the deal. The Trade-Marks Act contains certain requirements for license agreements, and if these are not met, the trademark owner is running the risk of having the trademark struck off the register.

  If you are contemplating entering into a deal involving licensing or assigning a trademark, you should always have it drafted or at least reviewed by a trademark lawyer.

  In many cases, we may draft and review trademark licenses and assignments for a project fee, instead of at the hourly rate.

• Assisting parties in negotiation of trademark licenses and assignments;

  While it is true that every deal depends on which party wants the other more, it is almost impossible to negotiate a good deal if one does not have sufficient knowledge of how trademarks law works.

  The party at the other end of the table tends to offer more reasonable terms if you are represented by a trademarks lawyer.

  Also, with several mandatory requirements for what constitutes a valid trademark license, it is important to make sure that all the right questions are asked and all relevant issues are agreed upon.

• Consulting owners of registered and common-law trademarks on all aspects of distinctiveness and use of trademarks;

  The purpose of trademarks is to distinguish goods and services of the trademark owner from goods and services of everyone else. If a mark no longer fulfills this function, it is no longer a “trademark” in the sense of the Trade-Marks Act. Coming up with a catchy name and having a valid trademark are not necessarily the same thing.

  The term “use” has a very specific definition in the Trade-Marks Act. In simple terms, a trademark is deemed to be used in association with wares (goods) if it is marked on the goods themselves or on their packaging at the time they change hands. The test is less strict with respect of services: for a trademark to be deemed to be used in association with services, it must be displayed in the performance or advertising of such services.

  Without a good understanding of these terms, it is virtually impossible to develop a sound business strategy involving the use of trademarks.

• Consulting trademark owners whose trademark rights have been infringed;

  If you are a trademark owner (regardless of whether it is a registered trademark or not), and someone is using your trademark without your permission, there are two questions you may be asking: (1) is the unauthorized use illegal? and (2) what can be done about it?

  It is important to see the difference between these two questions.

  Once you know the answers to these two questions, you will be in a better position to plan your next steps.

• Consulting parties who believe that they have been wrongfully accused of passing-off or trademark infringement;

  If someone is accusing you of infringing their trademark rights or of passing-off, and you believe that you have done nothing wrong, we will be happy to suggest a strategy for your legal defence. Baseless accusations are not rare, and often a strong response is all it takes to make the bully go find a different victim. And if there is some basis behind the accusations, now may be the best time to consider solutions that will save the expense of prolonged litigation.

• Representing companies and individuals in courts in Canada;
  If all else fails, trademark disputes are resolved in court.

  It is a known fact that only an infinitesimal number of cases actually filed in court get to trial in Canada – most cases get settled at some point.

  Some lawyers are notorious for letting litigation drag on for much longer than necessary – only to increase the billings. Mincov Law Corporation is different in that our goal is to find the shortest way from point A to point B, not to keep wondering around at the client’s expense.

  There are many steps in the course of a typical lawsuit, and we can represent you throughout the trial to reach the optimal solution. It is extremely important for the lawyer and his client to be able to see things in context of what the goal is and what alternative solutions may cost.

  This is what determines a successful strategy.

• Representing parties in domain name disputes.
  Domain name disputes are a subset of trademark infringement disputes, where a third party registers a domain name that is identical or confusingly similar to a trademark.

  As explained here, domain name disputes can be resolved using specialized administrative procedures such as UDRP and CDRP, or in court.

  Andrei Mincov assists clients using any and all of these proceedings.