Ensuring Compliance with Digital Signature Lawfulness for Trademark Assignment Agreement in Canada

How to eSign a document: digital signature lawfulness for Trademark Assignment Agreement in Canada

Andre to begin with could you briefly describe the difference between the trademark systems in the USA and Canada well the systems in Canada and us are more similar than they're different there's a lot of similarities you pretty much do very similar process you file a trademark it has to have an owner it has to have list of goods and services and that stuff is the same you put your goods and services in the same classes the classes are pretty much the same are between both countries but there are some distinctions that are worth mentioning the biggest one I would say is in the US your trademark won't register until you can prove to the trademarks office that your trademark is already used in Commerce and what that means is that you are already selling products and services under your brand in Canada it's not the case anymore you just file your trademark they don't care whether you're using it or you're not using it at the time of filing and it will get registered so again the the important thing here to to realize that in U.S you can still file your trademark before you start selling products and services under your brand but after the trademarks office says yes it's okay we like your trademark you will still have to show them the use it's called an intent to use trademark which gets registered after you've you've provided them whether it's photos or PDFs things like that just showing that yeah you're you're starting to to sell your products and services under that brand the other distinction would be that the way they calculate the the government fees is different so in the US it's a flat 350 dollars per class regardless of whether you do one class or 27 classes right you just multiply 350 by the number of classes in Canada they go with a different system so that you you pay 300 something dollars for the first class and then a hundred something dollars for each class after that and the reason I'm bringing up the something is because they keep changing the numbers they just add two percent to the government fee every year so now the the the numbers are ridiculous because they're sense in them nobody can remember this it's like 103.87 one year and then it's 105 dollars and you know forty seven dollars it's so ridiculous but that's how they do it and um that's another difference these would be the the two biggest differences the actually no there's a third one the third one is that uh us is a lot more relaxed in terms of descriptive marks so with Canada if the trademarks office thinks that your trademark is merely descriptive basically that it describes a feature or character if your brand describes a feature or characteristic of your products and services like for example uh if you do cold if you want to trademark cold for ice cream or something like that right or black and white for pencils the Canadian trademarks office is going to say no you're not going to get it in the US they're still going to say no for the principal register but you will have an opportunity to register that same trademark in What's called the supplemental register which is a good backup plan for those brands that are not quite there that aren't quite that distinctive to Merit registration the principal register but it will might go on the supplemental register so these three big ones I would say are the most important ones to know from your perspective what are some key factors that determine the ease of obtaining a trademark in both countries so having said that in both countries there are considerations you need to take into account to know uh to maximize the chances of your trademark going through and really all of that boils down to how well you've researched your trademark how well you've researched the viability of your trademark because in the US the whole process takes about a year and a half with the first nine months you just sit there and wait for the trademark's office to get back to you say everything is good with your application or there's a problem in Canada it's even worse it's about 48 months now for the whole process so you sit there for three years maybe more with zero feedback from the trademarks office and when they do get back to you and say well there's a problem right that's the last thing you want so the key factor of success here is to to get someone who knows what they're doing to do two things first is to do a proper comprehensive trademark search to confirm that what you want to trademark is even trademarkable because if it isn't then you've just wasted a lot of money and a lot of time and time is much worse here because again even in the best case scenario in the US so you get nine months right so you file your trademark you're not going to just sit and wait for it to get registered you're probably going to start making your products or rendering your services you're going to start spending money on ads packaging things like that under your brand and then they tell you whoops you can't have that right so you want to know that your brand is a no-go as soon as possible so that's the first factor of success and the second factor of success is actually getting someone who knows what they're doing to file your trademark application trademark application consists of multiple parts right one is the owner you want to be clear who owns the trademark is that you as an individual is that your company is that your LLC things like that you want to be clear as to how you describe the brand if you go for a logo they will require that you in words describe uh your your logo right what it looks like what it says how elements are positioned relative to one another things like that and most importantly the list of goods and services if you mess that up chances are not only will they get back to you with an office action which means a letter that lists things that are that they don't like about your trademark application the bigger problem here is that they can't accept it but your list might not really reflect what your trademark needs so that requires that you get a consultation from someone who who knows what they're doing or better yet just have them do it on your behalf in your experience which country USA or Canada tends to have a more streamlined process and can you elaborate on why you believe this to be so so the process in both Canada and you classes relatively streamlined the problem is with Canada right now there's such a huge backlog they just don't have enough people to examine your trademark application that's why it takes so long if you ask me this question four months ago I would say us is way more streamlined because they had all of their documents between you and the trademarks office posted online you could open in any application on their portal and you'd see what they said what you said what they said what you said for any trademark in Canada it used to all be done on paper we would get literally stacks of those letters every week and uh funny enough we would scan them and then we would trash them right so Canadian trademarks office would waste lots of money on the envelopes the stamps and we would lose lots of money and time scanning that stuff back into a digital format so finally a couple of months ago Canadian trademarks office switched to the electronic format which made things million times easier so from there um really it's it's all about the same uh it's pretty much the same way with most countries so I would say they're they're on par just in U.S things don't take as long as they do in Canada can you share a case from your professional experience that highlights the contrast and difficulty between getting a trademark in USA and Canada well we've had quite a few trademarks that did go through in one country and were refused in the other and it's always a big dilemma for the for the brand owner because not only are laws different also they're being interpreted by humans right so sometimes it's a result of different laws and sometimes it's a result of one examiner finding something that they could easily lap through but they didn't so usually what happens is the U.S trademark can go on the supplemental register and in Canada it will be denied that's that's one possibility another type of clashes are previously filed trademarks so if for example you file a trademark in both countries and in Canada where there are a lot less trademarks being filed every year so again it's about 70 000 trademarks a year and in the US they follow about 700 trademarks every year so let's say you file a trademark in Canada there are no similar trademarks it goes through but in the US somebody might have filed a similar trademark before you did so it will be allowed in Canada and will be rejected in the US so things like that how have changes in the digital landscape affected the ease or difficulty of obtaining a trademark in both countries so with the world going digital and Global we see a tremendous rise in the number of trademarks being filed and the speed at which this happens because before when it was much harder for others to imitate your brand you really didn't have to run through the trademarks office the day you started your business now it's not the case because by the time you become successful someone will have trademark your brand already right and you just can't afford that there have been so many cases when people would go to Kickstarter and try to you know build their products build their brand and by the time their campaign was finished someone in China would have filed all the trademarks and you know pretty much kill the whole idea around it they would not just file the trademarks they would actually have a factory build look-alikes and that's a problem right so with the world going global and going digital really what you need to think about is look at what successful brands are doing and what they're doing is their file their trademarks long before they launch because that's the only way to be sure that you're going to end up owning what it is that you're planning to invest your time money and energy into what role is international law play in the process of getting a trademark in the USA or Canada internationally so the important thing to understand is that there's no such thing as a global trademark trademarks are done on a per country basis and uh just like I said you know your trademark can go through in one country and get rejected in the other country there are mechanisms there are international treaties that make it easier for you to file your trademark in lots of countries at the same time there's Madrid agreement allows you to file one application and uh then it will get sent to all of the national trademark offices around the world it's not something everyone should do really I think that the current system is badly outdated because it wasn't designed for a world this connected the world this small when once you launch your trademark in France everyone knows about it you know in the world pretty much within days within months right so at some point I think they will have to revisit how trademark system should work on the international basis but right now we're dealing with if you want to build a global brand you'd have to file all of those trademarks you'd have to go through the expense so what we typically recommend that people do is filing it for Home Country first that's a must right where you have your headquarters start there then list the countries where you expect to make money from where your your customer base is right and for for me the rule of thumb is if you're planning to make more than thirty thousand dollars in that country trademark there third layer is countries where you have expenses so if you run ads to Australia and you spend I don't know a few thousand dollars a year there trademark there just to be sure that you're protected and lastly if you make physical products and then you import them from that country to where you sell them make sure you trademark them in the country where you make stuff so for example let's say you make bikes in China and you sell them to to North America if you don't trademark that brand in China someone else can and even if you are not planning to sell anything to China if someone trade Master brand in China you will not be able to export your own bikes out of China because that will be considered infringement based on Chinese laws yeah so really that's what trademark Factory specializes in most trademarks we file are in U.S and Canada so if you want to get your brand trademarked with a guaranteed result for a guaranteed budget go to trademarkfactory.com and request your free call with one of our advisors they'll help you get started they'll answer all your questions and that's how you will secure the legal ownership of your brand