What If Your Trademark Is Refused?

In Canada, registration of a trademark is straightforward procedure. However,  that does not mean your trademark application cannot be rejected by the Canadian Intellectual Property Office.

Everyone wants their trademark to be strong and unique. On the other hand, they can still be refused irrespective of their uniqueness. There are several reasons for the refusal - likelihood of confusion, misdescriptive mark, and scandalous mark. When such a situation occurs, your trademark refusal should be taken seriously. We, at Trademark and Patents have recommended these 4 steps to keep in mind, if your trademark has been refused.

1. Seek Advice From Someone Experienced

It is preferable to get advice from someone who is experienced with trademark refusals. If you are aware of the reason for your trademark refusal, talk to people who have received similar refusals. You can learn from their experience and also become aware of what action did they take and did work or did it not.

How do you find such people? The best method is to ask around in your circle or ask through online platforms.

2. File an Appeal

If your trademark application has been rejected by the Canadian Trademark Office, an appeal can be filed under Section 56 of the Trade-mark Act with the Federal Court of Canada. Once you file an appeal, there is a high threshold to convince the court that the new evidence is sufficient to apply. This application of appeal should be made immediately after the refusal of trademark. You can also file it later if you have a sufficient cause for the delay.

3. Provide a Proof of Acquired Distinctiveness

In most cases, a trademark owner can accept that a trademark is descriptive and argue that it is ‘acquired distinctiveness’  for its products and services. This means that the customers can see descriptive words as a trademark for those goods and services. If the trademark hasn’t been used in years, the owner has to provide affidavits, sales, advertising and earned media to meet this threshold. An actual proof of acquired distinctiveness is helpful.

4. Consult a Trademark Attorney

When the trademark has been refused, do not be satisfied by the refusal decision. Instead, consult the trademark attorney regarding this situation. You should follow up with a trademark lawyer qualified to practice before the trademark office that has refused the registration. You can have him argue your case or put up justifications on your behalf in front of the trademark office.

If you have any difficulty with an office action or if you are concerned about the process of trademark refusal, please feel free to contact us for consultation. We will be more than happy to help you regarding any trademark and patents associated query.