Prerequisites for Registering a Trademark

You've made the decision to register your Trademark, but where to begin? Preparing for a Trademark Registration is an extremely complex process best handled by an experienced Trademark Lawyer. The C2 Global Law Trademark Lawyers can advise, prepare and follow through on your Trademark application.

There are many prerequisites for registering a Trademark.

A) First and foremost is the Trademark; what is the Trademark that you want to register? It must be distinctive and capable of identifying the source of a particular good and/or service. There are three possible Trademark formats; however Format 1 and Format 2 may not be combined into one Trademark:

  1. Standard Character Format – used to register word(s), letter(s), number(s) or any combination thereof, without claim to any particular font style, size, or color, and absent of any design element. Registration of a Trademark in the Standard Character Format will provide broad rights, namely use in any manner of presentation.
  2. Stylized/Design Format - used to register a Trademark with a design element and/or word(s) and/or letter(s) having a particular stylized appearance that you wish to protect.
  3. Sound Mark

B) Once you have your Trademark, you must be able to identify the goods and/or services to which the Trademark will apply, clearly and precisely.

C) You must specify the proper basis for filing - typically either a current use of the Trademark in commerce or on an intent to use the Trademark in commerce in the future.

D) Conduct a preliminary search of existing Trademarks to check whether your Trademark could be confused with someone else's, therefore avoiding potential Trademark infringement and potential lawsuits.

E) Conduct a search of trade names as trade names are often used as Trademarks even when they are not registered as such.
If you are ready to proceed with your application for Trademark Registration, an application must contain:

  • name and address of the applicant
  • a drawing of the Trademark, unless the Trademark consists solely of a word or words
  • the wares (products) or services in association with which the Trademark is proposed to be used, or has been used
  • either a statement indicating intention to use a certain Trademark and how that use will occur or the date of first use of the Trademark in Canada, whichever is applicable
  • application fee

Contact the C2 Global Law Trademark Lawyers to discuss all issues related to registering a Trademark. We have the knowledge and experience to navigate the Trademark registration process for you.