The Canadian Bar Association
Intellectual Property

Trademark registration process starts with research

Businesses looking to register a trademark as part of a venture should go beyond just a Google search to see if it’s already been used, says Toronto trademark and copyright lawyer Taras Kulish

“The process starts with an idea but you have to check to see, not only if it’s already been taken, but whether it’s been registered as a trademark, and even then, you need to go deeper to be sure,” says Kulish, a senior associate at Steinberg Title Hope and Israel.

He outsources the trademark search process for clients and chooses the service provider based on the client’s budget.

"When people are getting started, they can hire a trademark search service directly themselves,” Kulish says. “It might save some time and money at the start but a trademark lawyer has the experience to analyse the data pulled from a search. That is the value add of hiring a qualified lawyer at the outset. Of course for the process itself, which seems simple until you receive an Examiner’s Report, I would say you should hire a lawyer to complete all the forms and file the documents, since it can be quite complicated.”

He says when a company has an idea for a new product or service, regardless of whether they are a startup or an established enterprise, they usually want to brand it and that means naming it.

To ensure there’s no confusion in the marketplace, they should seek to register the name and any associated images, such as a logo, as a trademark, Kulish adds.

Trademarks protect company brands, while copyright, which is similar, is designed for artistic works such as movies, books and music. A patent protects innovations and inventions, ensuring the creator retains all rights to its use and licensing.

In the case of a trademark, Kulish says, there’s no harm in using a variety of search websites for a cursory view of what’s in the marketplace — and what isn’t.

“You should use more than one search engines, because they are all a little different — Google, Bing, and others,” he says. “And make sure you go down at least four or five pages because it’s the obscure usages of trademarks or those which have expired on the registry which will come back like zombies to bite you later.”

The results are only indicative of what’s in use, Kulish says, and may eliminate some candidates quickly if they are found to already be in existence, saving time and, ultimately, money.

“I’d also suggest a look through the Canadian Intellectual Property Office (CIPO) site,” he says. “It’s free, as is searching the United States Patent and Trademark Office (USPTO).”

If the business isn’t comfortable doing their own research they can also outsource it.

"The online search engines won’t sort or prioritize the results for you but they add some value,” he says. “For example, the platinum standard is Thompson Compumark, while The Trademark Search Company is also an economical option. Sagacious IP and the Trademark Search Company send the actual search work to India and that’s how they keep their prices lower. They offer good quality searching for a lower price point affordable to small businesses."

A good basic search with those companies will run about $225 or so, he says, with the more detailed proprietary database searches costing triple that.

“The difference with a what's called a 'knock off' search from the CIPO or USPTO database and a higher-end search is that with Thompson Compumark, for example, they are importing data into their database then refining, sorting and filtering it for ease of the searches they do," Kulish explains, "so they are adding value to the raw data by managing it.”

There’s a caveat, however, he says: “Just because something isn’t showing up as registered, or seems abandoned, doesn’t mean it’s free and clear. There’s no clear path and you can be challenged at the opposition stage of the registration process.”

He says even if a company hasn’t registered a trademark or has let it lapse, they still have rights under common law.

“Searches don’t take long — some in as little as 30 or 40 minutes or others up to 48 hours,” Kulish says. “Then there’s a couple of hours of my time to start the process with the forms to register the trademark. All told it can take up to eight months to 10 months from filing the application to registration of the mark, so it is a long process which has to be done right.”

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