Trademarks for Canadians

Trademark Examiner's Reports

An application to register a Canadian trademark will receive one or more reports from the trademark examiner at the Canadian Intellectual Property Office (CIPO), with the first such report usually coming six to eight months after the application is filed. These trademark examiner's reports are commonly referred to as "office actions".

Trademark Examiner's Reports cite objections to registration of the trademark based on the Examiner’s review of the application and the trademark register. Examiner's Reports  usually include one or more of:

1. A requirement that the applicant disclaim trademark rights in one or more words in the application;

2. An objection to the application on the grounds that it is clearly descriptive or deceptively misdescriptive in the English or French language;

3. An objection to the application on the grounds that it is confusingly similar to another person’s registered trademark.

The response to an Examiner's Report must successfully overcome the Examiner’s opposition. If not, the application will be rejected. Accordingly, responding to an Examiner's Report is a "high-stakes" undertaking best left to experts.

We have years of experience drafting applications to minimize the nature and complexity of Examiner's Reports, and in responding successfully to Examiners once they have raised issues.