At Durand Lawyers, our philosophy has always been to promote “law and business together”.
But what does that mean, practically?
It means that our firm offers legal services you and your business can budget around. Our latest offering, “Minimum Viable Intellectual Property”, or MVIP™, is based on that philosophy. It depends on our team’s analysis of our client's needs, and what their businesses can and can't “live without” with respect to intellectual property.
Seeking to minimize the impact of their business decisions on their asset protection, Durand Lawyers sees intellectual property, including trademark filing, as an investment, rather than an expense which you’re simply getting out of the way.
As a part of our series on this newly offered service, we’ve decided to take a closer look at trademark filing, and what businesses should consider before filing in Canada (we’ll refer to that trademark as a “Proposed Mark” below).
Searching Before Filing
If you’ve thought about filing a trademark before, you’ve probably already heard about conducting searches prior to filing. Very broadly, these can be separated between preliminary and extensive searches.
A preliminary or “knock-out” search is only intended to find prior filings for very similar marks (i.e., identical or nearly identical marks), as well as assess, if possible, the risk of a likelihood of confusion refusal by a USPTO or CIPO trademark examiner reviewing a potential trademark application for your Proposed Mark. A knockout search typically covers only the wording in the mark, and not any design or graphic elements. Accordingly, knockout searches don’t anticipate other types of rejections such as mere descriptiveness.
However, preliminary searches can’t determine if there has been “common law” usage of trademarks which may be deemed confusing with your Proposed Mark. It is for this reason that we typically recommend employing the services of a third-party search provider who would review databases to ensure that we can file the Proposed Mark with a reduced level of business risk, including that of future opposition.
It should be noted that a comprehensive search is not always necessary, and depends on the inherent qualities of your Proposed Mark. While assessing whether to conduct a preliminary or comprehensive search, ask yourself:
If it includes a design, is it visually similar to another mark?
Is it phonetically similar, when said out loud, to another mark?
Have you just started using the Proposed Mark in the course of your business?
Does your Proposed Mark reference or allude to an existing trademark or brand, even if only as an inspiration?
If you answered yes to one or more of the above, it is highly advised that you hire a trademark agent to conduct a search for you, whether preliminary or extensive, prior to your trademark filing in Canada.
It always starts with the fees. While our honorariums will vary based on the complexity of your trademark filing, here are the fees you should consider when filing your trademark in Canada:
CAD $336.60 for one class of good or service; and
An additional CAD $ 102.00 for each subsequent class of goods and/or services.
What does MVIP ™ entail?
Ask yourself, how do you invest in your Intellectual Property, rather than simply spend money to protect it? Trademarks are, by their nature, better suited for long-term goals. Once they’re filed, your product branding and advertising may become tied to it. While that can benefit your business if the trademark issues without any problems, opposition by another party can put you in a bind while you rebrand.
Most companies assign engineers, scientists and/or other technical professionals to be responsible for research and development, as well as innovation. Durand Lawyers offers MVIP™ as a service to assist businesses in project management, portfolio oversight when it comes to the IP assets they are creating and/or disclosing to the public, including competitors. This includes working with businesses during various phases of innovation, product scaling, geographical expansion, creating new and/or even selling the IP you’ve worked to secure.
Durand Lawyers brings Law & Business Together. We are a law and business advisory firm specialized in intellectual property, business strategy, as well as civil and corporate law. We are uniquely positioned to help clients in emerging technology industries such as FinTech, SaaS, blockchain and cannabis, employing both lawyers and experienced entrepreneurs to get the best possible outcomes. For more information visit our website at www.durand-lex.com. We are also involved with the LES and FORPIQ.
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