Trademarks

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Trademarks

Trademarks Team

Michael Poznanski

Mike is a solicitor with expertise in corporate, commercial, intellectual property, real estate, and estate planning matters.

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Trademark Process and Costs

 

A. Overview

A straightforward, single class application without a search and opinion will cost approximately $1580.00 plus taxes = approx. $1800.00.

On average, with a search and availability opinion, it will cost you approximately $3,000 CAD and take between one to two years to obtain registration of a trademark in Canada. In the US, the process and costs are similar although the exchange rates with USD cause the costs to increase, as does the increased per class costs both at filing and registration.

We spread this cost out over the course of the file. Objections during the application process, either from the trademark examiner or from third parties opposing your application can extend the length and cost of the registration. Costs for design marks, hybrid marks, certification marks, or section 9 marks will vary – please contact us directly for a quote. Here is an overview of the process in Canada:

 

  1. The first step is an initial search and opinion, along with confirmation of your goods and services. This is usually completed within two weeks of your initial inquiry. We charge $675 CAD in fees plus taxes and the cost of the search, totalling on average of $1,100 – $1,500 CAD.
  2. Upon your review of our opinion and instructions to proceed, we prepare and file the application. The official fee in Canada is $330 CAD for a single class of goods or services (+$100 CAD official fee for each additional class), and we charge $650 CAD in legal fees plus taxes and disbursements.
  3. After filing the application, we will receive a filing receipt. We review this for accuracy and report to you.
  4. You will then not hear from us for several months, and sometimes 12-18 months. The examiner will review the application, and if there are no technical or substantial objections, the examiner will proceed to the next step. If there are issues, such as confusion with an existing trademark, these must be addressed. We charge $150 CAD to report the examiner’s report to you. Should you wish to proceed with a response, we charge an hourly rate for all objections and examiner’s reports. My current hourly rate is $425 CAD plus taxes and disbursements. We will bill you for any of these separately.
  5. If there are no objections, or the objections are overcome, the examiner will issue a Notice of Approval, and publishes the trademark for potential opposition. We report the Notice of Approval to you. The process then takes another 3-4 months. Upon publication, we will review for accuracy and send you a copy along with your account for both the Approval and Publication, at $300 CAD in fees plus taxes and disbursements.
  6. If no opposition is raised at this stage, the Examiner allows the application to continue and issues a Notice of Allowance. We report to you and await the certificate of Registration, which usually issues a few weeks later. We then review the certificate for accuracy and report to you along with an account of $300 CAD in fees plus taxes and disbursements.

B. Foreign Registration

You gain priority on US and other foreign registrations within 6 months of your filing in Canada, which can be advantageous. The registration procedure in the US is similar to Canada, although the time frames can be slightly shorter, but the fees are slightly higher. Registration in the US, if straightforward and requested at the same time as the Canadian search and opinion, will cost approximately $3,500 – $4,500 CAD and follow roughly the same steps and costs on the previous page. Note however that substantive objections by the Examiner and oppositions may need to be handled by a US attorney. We have connections with US attorneys that can act and assist us with these. If that occurs your costs can increase substantially. Note also that the US class-based system includes per class fees at the Allegation of Use stage as well as upon application. We also have the ability to file applications through the Madrid Protocol which can access multiple countries or jurisdictions at once. Please contact us for a more accurate quote or for information regarding registration in any other jurisdictions.

 

C. Renewal

Your registration will also require to be renewed every 10 years in Canada, and in the US, two separate steps, one after 5 years, and one after every 10 years post-registration. In Canada renewal is $400 CAD official fee, single class, and $100 CAD per additional class. Our fee is $500 CAD, so for a single class renewal, your cost is $900 CAD. In the US renewals are handled slightly differently and we refer you to our miscellaneous tariff page. While we do docket your renewal dates and strive to contact you according to the last contact information you have provided to us, we require your express instructions to proceed with the renewal. It remains your responsibility to contact us and update your contact information with us. If you do not update your contact information with us and we are unable to reach you, and/or you fail to provide us with instructions, we take no responsibility for registrations which are abandoned for failure to file renewals or maintenance filings.

 

D. Administration

We require a retainer of funds prior to any work performed, or a credit card authorization. We also require that the entity or person that engages us sign a retainer agreement agreeing to our fees and procedures.

Thank you for enquiring about the trademark filing and registration process and potential costs. We hope that this summary will assist you in instructing us. Our fee schedule is as follows:

We look forward to working with you and please contact us with any questions or inquiries.

Our fee schedule is as follows:

** Canada ** OFFICIAL FEE OR DISBURSEMENT OUR FEE (PLUS TAXES AND DISBURSEMENTS)
Search and Availability Opinion (Federal Register, Verbal, single class) $320 USD* $675 CAD
Search and Availability Opinion (Federal Register, Design, single class) $510 USD* $675 CAD
Filing, single class $330 CAD $650 CAD
Each additional class $100 CAD
Review and Reporting of Notice of Approval and Review and Reporting of Publication (collectively) $300 CAD
Review and Reporting of Notice of Allowance, and Review and Reporting of Certificate of Registration $300 CAD
If Applicable
Initial Review and Reporting of Examiner’s Report $150 CAD
Response to Examiner’s Report Hourly ($425 CAD per hour)
Opposition Hourly ($425 CAD per hour)
** USA ** OFFICIAL FEE OR DISBURSEMENT OUR FEE (PLUS TAXES AND DISBURSEMENTS)
Search and Availability Opinion (Federal Register, Verbal, single class) $405 USD* $675 CAD
Search and Availability Opinion (Federal Register, Design, single class) $755 USD* $675 CAD
Filing, single class $275 USD $650 CAD
Each additional class $275 USD
Review and Reporting of Notice of Publication and Review and Reporting of Publication (collectively) $300 CAD
Allegation of Use $100 USD per class $300 CAD
Review and Reporting of Certificate of Registration $300 CAD
If Applicable
Initial Review of Examiner’s Report $150 CAD
Response to Examiner’s Report Hourly ($425 CAD per hour)
Opposition Hourly ($425 CAD per hour)

* 3rd party providers fees are subject to change. Note USD where indicated. Current to July 2019.

Miscellaneous Trademark Tariff

CANADA OFFICIAL FEE (CAD) OUR FEE TOTAL
PLUS TAXES
Transfer or Assignment $100 $350 $450
Change of owner name (same owner) $200 $200
Form 7 Extension $450 $750 $1200
Abandon TM after registration (immediate) $150 $150
Abandon TM after registration (let die)
Certified Copy of Registration $50 $150 $200
Renewal (10 years), single class $400 $500 $900
Renewal, each additional class $125
Section 45 Notice $400 Hourly
Statement of Opposition $750 Hourly
License Agreement $750 min $750
USA
(most USPTO fees are PER CLASS)
OFFICIAL FEE (USA) OUR FEE TOTAL**
PLUS TAXES
Transfer or Assignment $40 + per $350 $450
Change of owner name (same owner)
Section 8 Maintenance of US Trademark (5-6 years) $125 $500 $600
Section 15 Incontestibility $200 $300 $500
Sections 8 and 15 Combined (5-6 years) $300 $675 $975
Sections 8 and 9 Combined (Every 10 years) $425 $675 $1100
Any above within grace period +$100-200
Extension for Statement of Use $125 $200 $325
Response to Suspension Notice/Inquiry $150 $150
Abandon TM after registration (immediate) $150 $150
Abandon TM after registration (let die)
License Agreement (Canada/US) $750 min $750

Fees are subject to change without notice. **USD subject to exchange rates. Current to July 2019.

Our Legal Services

Contact

530-130 Brew Street
Port Moody, BC
V3H 0E3

Tel: 604.937.1166
Fax: 604.937.5577

[email protected]

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