Dealing with Trademarks Office Issues (Office Actions)
When you apply for a trademark in Canada, you may receive an office action from the Canadian Intellectual Property Office (CIPO). An office action is a letter that informs you of issues or objections related to your trademark application. These issues need to be resolved before your trademark can be approved for registration. In this page, we'll discuss how to deal with office actions from CIPO and how to overcome common objections.
1. Understand the Office Action
The first step in dealing with an office action from CIPO is to carefully read and understand the letter. The letter will outline the issues or objections that CIPO has with your trademark application. Some common issues include:
- Confusion with existing trademarks
- Descriptive or generic terms used in the trademark
- Lack of distinctiveness
- Primarily or merely a name or surname
- Incomplete or inaccurate information in the application (e.g., missing translation of foreign words)
2. Consult with a trademark agent
If you are unsure how to respond to an office action or need help in preparing your response, it is recommended to consult with a trademark agent. An experienced trademark agent can help you understand the issues raised in the office action and provide guidance on how to address them. The trademark agent can also take over the application so that they can deal with any future communications or follow-ups from CIPO, and even discuss the matter with CIPO by phone.
3. Respond within the Deadline
It is important to respond to the office action within the deadline specified in the letter. Failure to respond within the deadline can result in the abandonment of your trademark application. If you need more time to respond, you can request an extension of time from CIPO.
4. Address the Issues Raised
In your response to the office action, you will need to address the issues raised by CIPO. This may involve providing additional information or evidence to support your trademark application, amending the application, or addressing objections raised by CIPO. It is important to focus on the issues and questions raised by CIPO. It is not necessary to provide a history of your company or brand or financial information unless requested.
5. Be Clear and Concise
When responding to an office action, it is important to be clear and concise. Your response should address the specific issues raised in the office action and provide a clear explanation of how you have addressed them. Use plain language and avoid technical language that may confuse the reader.
6. Follow Up with CIPO
After you have submitted your response to the office action, CIPO may take several weeks or months to review your response and make a decision on your trademark application. If you have not heard back from CIPO after a reasonable amount of time, you can follow up with them to inquire about the status of your application.
Dealing with trademark office actions from CIPO can be a daunting process, but with the right approach you can overcome objections and move forward with your trademark application.
It is important to understand the issues raised in the office action, consult with a trademark agent if necessary, respond within the deadline, and provide clear and concise information to support your application. If you have received an office action on your trademark application, please feel free to contact us for a complimentary consultation.
Disclaimer: The resources published on this website are available for informational purposes only and should not considered legal advice on any subject matter. By viewing these resources, the reader understands there is no solicitor client relationship between the reader and JZC Intellectual Property Law. This website should not be used as a substitute for legal advice, and readers are urged to consult legal counsel on any specific legal questions concerning a specific situation.