TRADE MARKS
 

In general, a trade mark is used to distinguish one trader's goods or services from another's. Prior to using the mark and/or filing for protection, I recommend that a trade mark search be conducted at least in Canada to determine the availability of the mark. My charge for conducting a Canadian trade mark clearance search and providing an opinion letter starts at $ 300.
 

If the search results are favorable, you should then consider filing a trade mark application for the mark. My charge  for preparing and filing a typical trade-mark application in Canada is about $850.

The cost of filing corresponding foreign applications varies considerably from country to country. Foreign applications must be filed within 6 months of filing the Canadian application if priority is claimed from the Canadian filing date. The cost of filing in the US varies, and depends on the number of classes of goods and services for which protection is sought.

If you are contemplating using a trade mark in the US, then I recommend that at least a US clearance search be implemented at the same time as, or soon after, the Canadian search. The types of available US searches varies considerably. My charge for conducting a standard search of the US federal register and an opinion letter is in the range of $400. The cost of conducting both Canadian and US searches at the same time and a combined opinion letter starts at $650. 

After filing a trade mark application, there are normally further costs associated with guiding the application through to the registration stage, such as convincing a trade mark Examiner that the application is one for which a trade mark registration should issue. This procedure is referred to as prosecution of a trade mark application. The prosecution costs will depend on the number of objections raised by the Examiner, if any, and the difficulty encountered in overcoming these objections. Also, once a trade mark is allowed in Canada there is a registration fee to be paid. The current cost for paying the registration fee is  $200 (the government registration charge) plus my fee and disbursements.

I note that the time span between preparing and filing an application and obtaining a registration is often at least one year in Canada. Hence, prosecution costs are not incurred all at once.

Before obtaining a trade mark registration, a trade mark user should identify that its mark (whether words and/or a logo) is being used as trade mark by including the symbol "TM" beside the mark. The symbol "R (circled)" should be used for registered trade marks only.

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See my article titled "A Primer on Trade Marks". 
See also the "Guide to Trade-Marks" from the Canadian Intellectual Property Office. 

 

Copyright  Patents Canada 1999,2000,2001, 2002, 2003,2004,2005,
PATENTS CANADA is a Trade-Mark of Thomas E. Malyszko

* In association with Field LLP, Alberta, Canada 
Last updated:August, 2010