1.
EVERYTHING YOU NEED TO KNOW
ABOUT TM PROTECTION
NORTH OF THE BORDER
Wednesday, October 5, 2016
1:00 pm - 2:00 pm

2.
1
Meet Your Moderators
Nehal Madhani
nehal@altlegal.com
Hannah Samendinger
hannah@altlegal.com

3.
2
How To Interact Today
Raise your virtual hand to ask an
audio question at the end
Type your comments and
questions here throughout

4.
3
Our First Presenter
John Lee
Lee IPT Law
john@leeipt.com

5.
4
Agenda
Overview of Canadian Trademarks
Canadian Records in Alt Legal

6.
5
Our Key Message
With changes to the law pending, now is a
good time to help your client’s protect their
trademark rights in Canada.
Alt Legal introduces Canadian Intellectual
Property Office integration.

7.
6
Who Will Benefit The Most From This Hour?
Focus is on providing a practical overview for
US Trademark Professionals.
Independent and small firm US trademark
practitioners with clients that have US
trademark rights, who may or may not have
service Canada or sell goods in Canada.

8.
7
Webinar Goals
Understand the advantageous of registering
in Canada
Understand the process and costs of
registration
See how Canadian records are tracked in Alt
Legal
See how you may confidently and
competently advise clients with an integrated
solution

9.
8
Why Canada Matters
Common market
Limits of “Making Known” in Canada
Registration gives best protection
Change in Canadian trademark law pending

10.
Protecting your client’s rights in Canada
can make you look like a genius.
9

11.
10
Trademarks In Canada
Business Name & Trade Names
Common Law Trademarks
Registered Trademarks
Certification Marks
Industrial Designs
Official Marks

12.
11
Official Marks
Official Marks are “UberMarks” for
“Public Authorities”

13.
12
Registration Process
1. Filing
3. Approval & Advertisement
2. Examination
4. Opposition Proceedings
5. Allowance & Registration
6. Post-Registration Life

14.
13
Filing Part 1
An application can be made with one or more
claims:
• Intent to Use in Canada
• Use in Canada
• Making Known
• Use & Registration Abroad

15.
14
Filing Part 2
Goods & Services Descriptions
• “Ordinary Commercial Terms”
• Canada is moving to a Class system

16.
15
Examination
a. Formalities
b. Entitlement

17.
16
Approval & Advertisement
Two-month window for Opposition after
publication in Trademarks Journal

18.
17
Opposition Proceedings
Canadian Oppositions are typically less
expensive than US Oppositions.
90% of Oppositions settle

19.
18
Allowance & Registration
Presently: 15 years
No interim Declarations of Use similarly to s. 8 & 15
Soon: 10 years

20.
19
Costs of a Typical Application
Government Fees
@ Filing CAD $250
@ Registration CAD $250
Legal Fees vary but typically
around CAD $1,400 to $1,600 but can be
higher owing to various issues
Trend towards fixed fees. (Ask me!)

21.
20
Post Registration Life
Non-use and cancellation proceedings
Incontestability* after 5 years

22.
21
Changes On The Horizon
New and expanded definition of “Trademark”
10-year registration Term
Classes for goods and services
*No Use required as a condition for
Registration*

23.
22
Recommendations
• File now and take advantage of Use and
Registration Abroad.
• File now to get establish priority and
entitlement.
• There is uncertainty about trademark
squatting and increased opposition activity
is expected.
• Reach out to clients to discuss Canadian
trademark protection strategies.

24.
Canadian Trademark Records
in Alt Legal

25.
Questions?
nehal@altlegal.com
hannah@altlegal.com
john@leeipt.com