Examiners’ Reports

Examiners’ Reports

The initial Trademark Office review normally takes six to twelve months. If an Examiner’s Report (Office Action) issues, the applicant has six months to respond.

THE MOST COMMON BASES FOR REFUSAL

IDENTIFICATION OF GOODS AND SERVICES:

This is the most frequent cause of Office Actions. Although there is a listing of acceptable goods and services available online, it is not an exhaustive list. On the one hand, this means that even if there is no listing for the particular goods or services you have in mind, your description may still be acceptable. More often, it means that revisions are required. The Trademarks Office will accept the descriptions from the Nice Classification System.

CLEARLY DESCRIPTIVE OR DECEPTIVELY MISDESCRIPTIVE:

The trademark may be refused if it is either clearly descriptive or deceptively misdescriptive of the character or quality of the goods and/or services, of the place of origin, of the conditions of or persons employed in the production of goods or the performance of the services. The name of the goods or services in any language is not a registrable trademark. There is a provision for acquired distinctiveness similar to the provisions of section 2(f) of the Lanham Act, but the test is as difficult to pass as it is in the U.S. Also, in Canada there is no Supplemental Register, so there is no recourse if an acquired distinctiveness argument is unsuccessful.

CONFUSION:

If the applied-for mark is considered “confusingly similar” to a pending application or a registered trademark for similar goods and/or services, a refusal will issue.

PRIMARILY MERELY A NAME OR A SURNAME:

If the mark is merely a name or surname it will be refused. One test for whether a word is to be considered “primarily merely” a surname is whether it is listed 26 or more times in Canadian telephone directories. Another is whether the word has any other significance. If so, it may be accepted.