Responding to a trademark examiner's office action
Replying to objections raised by the Trademarks Office on an application, including amendments to the goods and services.
What is included
- Searches for conflicting marks and gives a clearance opinion
- Files the application in Canada and, where needed, abroad under the Madrid Protocol
- Responds to examiner's reports
- Handles oppositions, non-use (section 45) proceedings and renewals
- Brings or answers domain name complaints
What is not included
- Government filing and registration fees and other disbursements
- Foreign lawyers or agents for protection outside Canada
- Appeals, or court proceedings not covered by the lawyer's written retainer
- Technical, valuation or accounting work
Who this service is for
- Businesses launching or rebranding
- Owners whose application was objected to or opposed
- Brand owners dealing with a copycat name or domain
Information to have ready
- 1The name, logo or slogan and how you use it
- 2A list of your goods and services
- 3The date you first used the mark in Canada
- 4Any examiner's report, opposition or complaint received
How a referral works
- 1Tell us in a few words what the matter is about, and who else is involved, so we can check for a conflict of interest.
- 2We recommend an Ontario lawyer for your matter, and at least one other you could choose instead.
- 3The lawyer runs their own conflict check, confirms the scope and quotes the fee, normally in a written retainer agreement.
- 4You pay the lawyer's fee to the lawyer. Any referral fee comes out of it, is disclosed to you in writing, and never increases what you pay.
NEO Legal Services Professional Corporation is a licensed paralegal firm, not a law firm. Every step of a referral, and your rights
Frequently asked questions
What does the lawyer charge?
A typical Ontario fee for this service is $500–$1,800, plus HST. The lawyer quotes the actual fee before any work starts. You pay the lawyer directly; the referral itself costs you nothing.
Do I need a search before I file?
It is strongly recommended. A clearance search can reveal conflicting marks before you invest in a name, and a conflict is easier to avoid than to fight.
What is a section 45 proceeding?
A summary process under the Trademarks Act that can remove a registration that is not being used. The owner must show use in Canada in the three years before the notice, or special circumstances excusing non-use.
General information only, not legal advice. NEO Legal Services Professional Corporation is a licensed paralegal firm regulated by the Law Society of Ontario.
Important limitations
- No outcome can be guaranteed, including registration or allowance by an examiner
- Protection in Canada does not automatically protect you in other countries
- Filing and response deadlines must be met; give the lawyer every date you know of
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