A trademark is a means used to distinguish the goods and services of one business from its competitors in the marketplace. In Canada, a trademark may be registered for one or more words, a graphic design, a signature, a slogan, 3-D shapes, moving images, holograms, unique form of packaging, sounds, melodies or unique interior designs. Sensory marks like colours, sounds, scents, tastes, textures are also be eligible for registration as trademark if they are not considered functional for associated goods or services and unique in Canada.
- File and prosecute trademark, certification mark, official mark and geographical indication applications in Canada on behalf of both Canadian and foreign applicants.
- File and prosecute trademark, certification mark and geographical indication applications in the United States on behalf of Canadian applicants with assistance from US attorney.
- File and prosecute international trademark applications under the Madrid Protocol through the World Intellectual Property Organization (WIPO) and/or with assistance from qualified local attorneys where necessary.
- Prepare, review and negotiate trademark licenses and assignments and manage recordal of such assignments and licenses, when necessary.
- Manage domestic and international portfolios of trademark applications and registrations.
- Send cease and desist letters regarding alleged instances of trademark infringement.
- Represent parties in tm opposition proceedings and litigation involving allegations of trademark infringement or "passing off" in Canada.
Useful Information to Provide Legal Counsel:
- Proper legal name of trademark owner and address.
- Proper legal name(s) of all previous owners or users of the mark in Canada before it was sold or assigned to the applicant and copies of any related agreements, if any.
- Identification of the mark.
- If the proposed mark is a graphic design, a 7cm x 7cm black and white representation of the mark on white paper.
- If colour is a feature of the mark, a colour copy of the mark.
- Description of goods and services already sold in association with the mark in the past as well as any goods and services that may be sold in association with the mark in the future.
- If sales have already commenced in association with the mark in the United States, the approximate date (ie. month and year ) of the first sale and, if applicable, the first advertisement.
- If application is to claim priority from a corresponding foreign application, particulars with respect to this foreign filing.
- Copies of any related co-existence agreement, letter of intent, memorandum of understanding, term sheet or discussion sheet.
- Copy or photograph of any allegedly infringing trademark and identification of the goods or services associated with it.