HOW A LITTLE P.R.O.D. CAN HELP YOUR TRADEMARK AGENT

When you first meet with a trademark agent, you will be asked specific questions about your trademark. How you respond to these questions will determine how accurate your trademark application is and, in turn, how susceptible it will be to an opposition in the future.

In order to ensure that the information contained within your trademark application is as accurate as it can be, remember to P.R.O.D. your brain before answering:

1. P - when asked who owns the trademark really consider this question and advise your agent if there have been any Predecessors who were using the trademark before you or your company, this could be a previous owner from whom you purchased the trademark or it could have been yourself acting as a sole proprietorship. Many times individuals determine to incorporate a company and move all of the assets from their personal business into the corporate entity. If this is the case, you must ensure that there is a trademark assignment in place and that the trademark application indicates that the trademark was used by a Predecessor, namely you.
2. R - Review and consider the goods and services that are going to be associated with the trademark. In particular, consider whether you are using the trademark in association with goods or in association with services. For example, if you are a distributor you may incorrectly advise your trademark agent that you are using your trademark on the goods that you are licensed to distribute, when really those goods are manufactured by another entity under that entity’s trademark.  The use of the your trademark in this example would actually be with respect to distributorship services, namely the distribution of the type of goods.
3. O - equally important is to ensure that you Own the trademark, in particular when the trademark includes a design element. Even if you have paid a designer to create a brand for you, this does not guarantee that you have full ownership of that brand. If you have failed to obtain, and the designer has failed to provide, an assignment of copyright and a waiver of moral rights then you need to advise your trademark agent so that she can prepare the necessary documentation to ensure that your trademark will not be opposed when it comes time to have it published in the Trademarks Journal.
4. D – when your trademark agent asks when you first started using your trademark it is easy to misinterpret the concept of “use” as it relates to trademarks, in particular because it is defined differently with respect to goods and services. Accordingly, when providing the Dates of first use, it is important to ensure that you understand how “use” is defined in the Trademarks Act which, for a good, means the date that the good, either bearing the trademark or sold under the trademark (ie. the good was put in a bag bearing the trademark), was purchased and, for a service, is when the service has been advertised using the trademark and such service is able to be provided. As well, if there are a list of goods and services associated with the trademark, you cannot simply provide a date of first use using the date that the first item or service was sold if the other items or services were sold at a later time. It will be extremely beneficial to your trademark agent to receive a table breaking the goods and services into an itemized list with a date of first use for each.

A little P.R.O.D. can go a long way with respect to alleviating errors on your trademark application, which errors may also provide grounds for an opposition when your trademark reaches the publication stage. This could save you in legal fees and will assist your trademark agent in preparing the best application that she can for you.