A Canada trademark search is often the first step in trademark registration in Canada. There is a wealth of information available online about using the Canadian trademarks database to ensure your trademark is not too similar to one already registered.
Many businesses choose to register their trademark in Canada and the United States. US trademark search and US trademark registration constitute a separate process with different requirements. Given the close geographical location and shared commerce, filing for a trademark in both countries can be the wisest decision.
What Can You File as Trademarks?
According to the Canadian Intellectual Property Office, a trademark is defined as “a combination of letters, words, sounds or designs that distinguishes one company’s goods or services from those of others in the marketplace.”
Additionally, a trademark must be unique. What can you trademark?
- Symbols that are unique to your business.
- Logos including specific colour schemes.
- Sounds that are unique to your business.
- Text that is unique to your business.
You can trademark any visual or sound that is unique to your brand. “Uniqueness” is a critical component of a trademark, which makes the Canada trademark search one of the most essential steps in registering your trademark in Canada.
Suppose you apply for a trademark that is “too similar to” one already registered. In that case, the authorities will reject the application, and you will have to start the application process from scratch. Also, keep in mind, trademark registration in Canada offers no protection outside of Canada.
For complete protection in North America, you should also file for a US trademark registration. Unfortunately, some businesses are under the impression that the Berne Convention protects trademarks, but it does not (more on this below).
What Can You File as a Trademark in the US?
According to the US Patent and Trademark Office, a trademark registration will protect “brand names and logos used on goods and services.” The trademark rules are similar to Canadian regulations. Still, there are some differences as to what is protected.
The process and the determination of “uniqueness” are the same. You start with a US trademark search to ensure your logo, slogan, colour scheme, or image is unique and proceed from there. Additionally, according to the USPTO, if you are a “foreign domiciled” entity (Canadian businesses are foreign domiciled), you must have an attorney prepare your application. The attorney must be licensed to practice law in the US.
The Canada Trademark Search
To start your application for a trademark in Canada, you should access the Canadian Trademarks Database. The CIPO (Canadian Intellectual Property Office) database contains over 140 years of registered trademarks. There are over 1.4 million trademarks contained in the database.
Every trademark, both inactive and active since 1979, is kept in the database. Trademarks filed and rejected are also stored in the database. The search is a daunting yet necessary process.
It is not a legal requirement to perform a search but highly recommended that one is completed. Not searching could render all the time and money you spent on the application process a waste.
Many businesses do not have the resources or staff to hire an attorney to manage the application process and the Canada trademark search. Typically, legal help is affordable, saves a great deal of time, and results in a successful outcome.
US Trademark Search
If you are determined to file in Canada and the US for your trademark, then a US-based trademark search will be a part of the process. The good news is because you will need an attorney to file your application in the US, the attorney’s office will manage the search for you.
The trademark search database in the US is a bit harder to use than the Canada trademark search database. For one, there are more than three times the number of trademarks in the US database. The USPTO reports 3 million marks contained in their database. Like Canada, the US TESS (Trademark Electronic Search System) has active, inactive, and rejected trademarks.
Trademark searches in both countries can take weeks to ensure accuracy.
A Deeper Search Dive
You should use the database for your search activities, but that is not all you should search for. Do an internet search to see whether someone is already using the mark. Common law protection may exist on that mark. Additionally, you do not want your brand confused with another brand.
What Is the Cost for a Trademark in Canada?
In both Canada and the US, the cost of applying for a trademark is a flat fee of $250. Both countries allow access to the database for free. Many businesses choose to hire an attorney to manage both their Canadian trademark application and their US trademark application. The $250 application fee is typically separate from the attorney’s fees.
Don’t Make This Mistake
Some business owners and others make the mistake of thinking that the Berne Convention protects their trademark like it protects copyright registration in Canada. It does not. The Berne Convention is an international agreement that protects copyrighted materials.
Copyright is issued by the same government entities as a trademark but a copyright protects intellectual property, including:
- Written works like essays, plays, novels, and research documents.
- Music, musical compositions, lyrics, and melodies.
- Art using a wide range of mediums.
- Speeches, lectures, and presentations.
- Ideas, quotes, and designs (that do not fall under patent like textiles patterns).
What Is The Berne Convention?
The Berne Convention is a group of international laws that protect individual artistic works. It protects literary and artistic works on an international level. Its full name is the Berne Convention for the Protection of Literary and Artistic Works. It was designed and accepted in Berne, Switzerland, in 1886.
A total of 179 countries are signed members of the Berne Convention, including Canada and the United States. The copyright laws in Canada and the US mimic the Berne Convention in that a copyright is affixed as soon as the work is completed.
Copyright law is different from trademark law in that you do not need to register a copyright (although you should) for it to be protected. If you create the work, the work is yours and no one has the right to “copy” that work without your permission.
The water does get a little murky, though, if you must go to court over an infringement and have not registered your copyright. Unlike Canada trademark registration, for which you must perform a Canada trademark search, copyright registration does not require a search step.
Protecting Your Brand
All this talk about Canada trademark search and US trademark search may cause you to shy away from the process, but fear not. Fight the urge to ignore registering your trademark. Protecting your brand is incredibly important for the success of your business.
You never want to leave infringement on your brand up to chance. Trademarks help you have legal recourse in the event of infringement and ensure your brand’s quality and reputation. Hiring an attorney that is an expert in trademark protection is the solution.
Call today to learn more about trademark laws in Canada and the US and how easy a trademark application can be with the right help on your side.