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Trademark Information & Intake Package · Welcome to PCK ... • PCK supplies client with trademark...

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BD019 Trademark Information & Intake Package
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Page 1: Trademark Information & Intake Package · Welcome to PCK ... • PCK supplies client with trademark information package and questionnaire gg Canadian trademark application* ... scope

BD019 

 

 

 

 

 

 

 

 

Trademark Information & Intake Package

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Table of Contents

Originating Trademark Application Packages (Canada) ......................................................... 3

Originating Trademark Application Packages (US) ................................................................. 4

Search Packages………………………………………………………………………………………..5

Welcome to PCK ......................................................................................................................... 6

Engagement Letter with Perry + Currier Inc. ........................................................................... 8

Payment Form ........................................................................................................................... 14

Lean Trademark Package Questionnaire ............................................................................... 15

Trademark Selection Tips ........................................................................................................ 19

Canadian Trademark Application Process ............................................................................. 20

Our Location .............................................................................................................................. 21

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Lean Bespoke B k T diti

ORIGINATING TRADEMARK APPLICATION PACKAGES (CANADA)

Lean$950

Bespoke$1,310

Bespoke Tradition

• Includes PCK fees and government fee for filing one C di t d k li ti *

•Includes PCK fees based on professional hourly rates and government fees for filing one

• Billing is based on traditional hourly rate model

Canadian trademark application*

• PCK supplies client with trademark information package and questionnaire

g gCanadian trademark application*

• PCK supplies client with trademark information package and questionnaire

• Exceptional flexibility in terms of preparing work product specifically tailored to unique client circumstances

• Unlimited access to the team of• Client completes and sends questionnaire to PCK

• PCK accepts answers to questionnaire “as is” and prepares and files Canadian

• Client completes and sends questionnaire to PCK

• PCK reviews answers to questionnaire and provides up to 3 hours of professional advice and

• Unlimited access to the team of PCK professionals of your choice

• Greatest flexibility in terms of worldwide filing strategies

Allows for free flowing ideasp ptrademark application based on the information supplied

hours of professional advice and consultation in relation to trademark filing and related business matters

• Allows for free flowing ideas back and forth between client and PCK

*For simultaneous filings of related Word and Design trademarks, we are pleased to offer a price of $2260 inclusive of filing fees and taxes. g g , p p g

All package contents and pricing subject to change without notice. Packages are for filing only and do not include costs of seeing application to issuance, and there is no guarantee an application will actually issue. All packages exclude clearance searches. These packages do not constitute professional advice or a contract for services. Packages and pricing can be varied to other than that shown in order to tailor a particular set of services to client needs. Discounts for volume may apply. Unless specifically stated, all amounts are inclusive of applicable disbursements and/or taxes. Commencement of work depends on completion of conflict checks and engagement letter and may require retainer funds to be held in trust until work is complete. For Lean filings, client assumes full responsibility for quality and sufficiency level of filed application. For other filings, the client and the agent will work together on sufficiency of the application. Please contact us for further details.“Lean”, “Bespoke” and “Bespoke Tradition” are trademarks of Perry + Currier Inc. © Perry + Currier Inc. 2015, all rights reserved

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Lean Bespoke B k T diti

ORIGINATING TRADEMARK APPLICATION PACKAGES (US)

Lean$1,090

Bespoke$1,600

Bespoke Tradition

• Includes PCK fees and government fee for filing one U.S. trademark application

•Includes PCK fees based on professional hourly rates and government fees for filing one U.S.

• Billing is based on traditional hourly rate model

• PCK supplies client with trademark information package and questionnaire

• Client completes and sends

trademark application

• PCK supplies client with trademark information package and questionnaire

• Client completes and sends

• Exceptional flexibility in terms of preparing work product specifically tailored to unique client circumstances

• Unlimited access to the team ofquestionnaire to PCK

• PCK accepts answers to questionnaire “as is” and prepares and files U.S. trademark application based on the

questionnaire to PCK

• PCK reviews answers to questionnaire and provides up to 3 hours of professional advice and consultation in relation to trademark

• Unlimited access to the team of PCK professionals of your choice

• Greatest flexibility in terms of worldwide filing strategies

Allows for free flowing ideasppinformation supplied

• Assumes 1 international class and intent-to-use application

filing and related business matters

•Assumes 1 international class and intent-to-use application

• Allows for free flowing ideas back and forth between client and PCK

All package contents and pricing subject to change without notice. Packages are for filing only and do not include costs of seeing application to issuance, and there is no guarantee an application will actually issue. All packages exclude clearance searches. These packages do not constitute professional advice or a contract for services. Packages and pricing can be varied to other than that shown in order to tailor a particular set of services to client needs. Discounts for volume may apply. Unless specifically stated, all amounts are inclusive of applicable disbursements and/or taxes. Commencement of work depends on completion of conflict checks and engagement letter and may require retainer funds to be held in trust until work is complete. For Lean filings, client assumes full responsibility for quality and sufficiency level of filed application. For other filings, the client and the agent will work together on sufficiency of the application. Please contact us for further details.“Lean”, “Bespoke” and “Bespoke Tradition” are trademarks of Perry + Currier Inc.

© Perry + Currier Inc. 2015, all rights reserved

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L S h B k S h L S h

SEARCH PACKAGES

B k S hLean Search CA

$650

Bespoke Search CA

$1,500

Lean Search US

$900• Includes •Includes Lean • Includes

Bespoke Search US

$2500

Includes Leanc udesTrademarks Register (active marks only)

• Includes identical and phonetically

c udes eaSearch CA searches plus Common Law Search and Internet Domain Names

c udesTrademarks Register (active marks only)

• Includes identical and phonetically

•Includes Lean Search US searches plus Common Law Search and Internet Domain Names

identical marks, confusingly similar marks

• Includes Web Common Law

identical marks, confusingly similar marks

• Includes Web Common Law SearchCommon Law

Search

Additi l h l f dit d h t Ab t ti t d bj t t h ith t ti

Common Law Search

Additional charges apply for expedited search requests. Above costs are estimates and subject to change without notice.“Lean”, “Bespoke” and “Bespoke Tradition” are trademarks of Perry + Currier Inc.

© Perry + Currier Inc. 2015, all rights reserved

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© Perry + Currier Inc. 2015, all rights reserved.

WELCOME TO PCK So you are thinking about intellectual property protection? Great! Perry + Currier Inc. is a top tier, business friendly intellectual property agency with plenty of happy clients, big and small, from many different industry sectors. We are delighted to have the opportunity to assist you too. To get rolling, here is what we need you to do:

1. Select a package offering from the attached menu and indicate below:

We recommend a trademark search be conducted prior to using and applying to register your trademark in order to avoid litigation and the associated legal and rebranding fees.

2. Please indicate one or more selection(s) below.

Package Name Cost

Lean Search (CA) Includes Trademarks Register (active marks only), identical and phonetically identical marks, confusingly similar marks; Web Common Law Search

$650

Bespoke Search (CA) Includes above searches plus Common Law Search and Internet Domain Names

$1500

Lean Search (US) Includes Trademarks Register (active marks only), identical and phonetically identical marks, confusingly similar marks; Web Common Law Search

$900

Bespoke Search (US) Includes above searches plus Common Law Search and Internet Domain Names

$2500

*Additional charges apply for expedited search requests. **Above costs are estimates and subject to change

Package Name Cost Sub-Total Lean Trademark Application (CA) $950

Bespoke Trademark Application (CA) $1310

Simultaneous Related Word and Design Applications (CA) $2260

Bespoke Tradition Trademark Application (CA) $2000 Minimum

Lean Trademark Application (US) $1090

Bespoke Trademark Application (US) $1600

Bespoke Tradition Trademark Application (US) $2000 Minimum

Other (Please contact PCK for amount) $

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© Perry + Currier Inc. 2015, all rights reserved.

3. Complete and review the attached engagement letter and sign.

If you are an individual and not a corporation, don’t forget to send in a photocopy of your government issued ID.

4. Complete the payment form when finished selecting desired package(s).

5. If the Lean Trademark Application package is selected, please complete the Lean Trademark Questionnaire.

6. Send all of the above to our intake department in any of the ways below:

a. Scanned documents via email to [email protected] b. Fax documents to the attention of “Intakes” at 416-920-1350 c. Deliver to the attention of “Intakes” at 1300 Yonge Street, Suite 500, Toronto, Ontario, Canada

That’s it! Within 24 hours we will be in touch with you to set up an initial consultation and get your IP filing going! Have any questions or concerns? No problem, just call our intake group at 416-920-8170 ext. 136. Yours very truly,

PERRY + CURRIER INC.

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Page 1 of 5 Initials:__________

ENGAGEMENT LETTER WITH PERRY + CURRIER INC. Date: VIA EMAIL ONLY Dear Sir/Madam: Re: Engagement Letter with Perry + Currier Inc. Thank you for contacting us. We are very much looking forward to working with you and supporting the growth and future of your endeavour. We are writing to detail the terms of engagement in respect of the provision of services on your behalf. As an initial housekeeping matter, please complete the following information in order to satisfy “know your client” best practices. Full Legal Name (Hereafter, “You” or “Client”)

Correspondence Contact Name

Correspondence Contact Mailing Address

Correspondence Contact Email Address

Correspondence Contact Phone Number

Accounting Contact Name

Accounting Contact Mailing Address

Accounting Contact Email Address

Accounting Contact Phone Number

If you are a corporation, please complete the following: Jurisdiction of Corporation

HST, VAT or other Government Business ID Number

Nature of Business

Stock Exchange Symbol (if any)

Registered Corporate Address of Business

Number of Employees (Required for patent filings)

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Page 2 of 5 Initials:__________

If you are an individual, please complete the following and provide a copy of your photo ID:

Citizenship

Government Identification Number and Type (e.g. Driver’s license)

Occupation

1. APPOINTMENT You wish for us to provide intellectual property advice and/or services, such as patent, trademark, industrial design advice and/or related services. We confirm that we act in our capacity as patent and trademark agents providing agency services through Perry + Currier Inc. While some of our professionals are both lawyers and registered agents, Perry + Currier Inc. is not a law firm. Legal services are provided by a separate law firm, Currier + Kao LLP, which is a separate entity from Perry + Currier Inc. Both firms use the common brand PCKTM, but for professional regulatory reasons each firm operates independently. This letter serves as an engagement letter with Perry + Currier Inc. If you require legal services, a separate engagement letter with Currier + Kao LLP is required and can be provided on request. Common activities considered normally within the course of duties of an agent include:

1) Rendering registrability opinions; 2) Commenting on scope of existing registrations; 3) Drafting of applications, including instructing draftsmen to prepare formal drawings; 4) Directly filing applications before the Canadian Intellectual Property Office, the United States

Patent and Trademark Office and/or the offices of the World Intellectual Property Organization; 5) Where circumstances require, instructing foreign agents to file applications before

non-Canadian Intellectual Property offices; 6) Responding to application rejections and other requisitions from various offices (“Prosecution”); 7) Preparing and filing formal documents, including powers of attorney and assignment

documents; 8) Paying filing, maintenance, issuance and other government fees; 9) Preparing and filing petitions and appeals before appellate boards; and 10) Reviewing and reporting registrations.

If we are instructed by you on other matters in the future, the general terms of this letter will apply and we would not necessarily write formally to you on each occasion. We would, of course, discuss with you the scope of the work and the personnel to be involved on each new instruction and anything else that you would like to raise.

2. PERSONNEL Perry + Currier Inc. is a firm comprised of registered agents, technical consultants and clerical staff. A responsible professional will be designated to work with you, and where appropriate for your matter, an assigned professional may also be designated who will work under appropriate supervision of the responsible professional. For a list of the firm’s current professionals, please see our website at http://www.pckip.com/pck-people; however please note that this information may change without notice.

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Page 3 of 5 Initials:__________

Work is assigned to professional(s) and clerk(s):

a) as per your request; b) where the work can be carried out efficiently and cost-effectively by persons other than those

requested by you; and c) where other special circumstances justify, such as the temporary absence of a member of a

team due to illness or holiday. 3. BILLING For our mutual interests, we strive to work as much as possible using flat fee tariffs. Our standard practice is to provide you with upfront quotes for work and seek your agreement before proceeding with that work. If we do not discuss a flat fee and you instruct us to take action on your behalf, you should assume that our hourly rates will apply. These rates are reviewed and adjusted periodically and will be supplied on demand. It may be necessary during the course of a matter to pay government fees or to instruct one or more experts outside the firm, such as local or foreign attorneys, draftsmen, translators, consultants or specialist counsel. We charge taxes, such as the Harmonized Sales Tax (HST), where we are obliged to do so. Unless otherwise agreed, fees and disbursements must be pre-paid before we will commence work. All pre-paid funds are held in our segregated trust bank account, on your behalf, until a final invoice is rendered. Any excess funds held in trust are returned on request. Conversely, in the event your trust funds cannot satisfy our invoiced amounts then all outstanding amounts are payable upon receipt and shall bear interest after 30 days at the applicable interest rate. Where we are holding money in trust, we will use this money toward payment of your invoices. We will always advise you when this is being done. Unless otherwise agreed, where your account remains outstanding and you experience a bankruptcy or insolvency event, or your account remains outstanding for more than 180 days, you agree to fully assign, to Perry + Currier Inc., all rights in any intellectual property materials and filings that we have performed for you. This assignment shall have first priority over any of your other creditors. You authorize Perry + Currier Inc. to file this letter with the relevant government authority against such filings as conclusive proof of such assignment. We reserve the right to refuse to perform any work, even if it results in loss of rights to you, should you fail, in a timely manner, to: a) pay any outstanding invoices, b) provide necessary prepayments, and/or c) provide instructions. We confirm that you are aware that a search conducted before a filing can reveal that you are ineligible for protection and that it is your responsibility to specifically instruct if you want a search to be completed before doing any type of filing for you. Furthermore, you recognize that no search itself is perfect and that relevant references can be missed. Beyond filing of any new intellectual property filings, there will be additional fees and disbursements for prosecuting the applications, and that, as with any application, there is a risk that the applications will be refused. 4. CONFLICTS We will not act for any other client on any specific matter on which we are acting for you unless we have your express agreement that we may do so. We reserve the right to represent other clients that may

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Page 4 of 5 Initials:__________

compete with you, provided such representation does not compromise our ability to represent you on matters for which you have retained us. 5. CONFIDENTIALITY While acting for you, we will gather information and documents which relate to your business and affairs. We shall keep the information and documents confidential, except where disclosure is required by law. However, unless you instruct otherwise, where your matters become a matter of public record we may identify you as a client of the firm. 6. COMMUNICATIONS Unless we agree otherwise in writing, we will use electronic communications, (e.g. e-mail, voicemail, fax, web form) to communicate with you and others in relation to any matter. This carries certain risks. We do not accept responsibility for any loss which you suffer as a result of our use of electronic communications. If you instruct, for an additional fee, we can set up an encrypted path for communication. Without limiting the generality of the foregoing, you must not assume that any electronic communication is actually received by the firm until you have received a specific acknowledgement from an individual in the firm; an automatically generated "read" or "delivered" receipt is not sufficient. Intellectual property filings necessarily generate a number of dates and deadlines. Failure to meet those deadlines can result in irretrievable abandonment of your intellectual property. We make efforts to use leading edge technologies and skilled personnel to track those deadlines and make reasonable efforts to keep you apprised and reminded of such dates. However no system is perfect and when working with us, it is important that you take steps to track deadlines in your own calendaring system and not rely on our reminder systems. As part of this working relationship, it is critical that you share responsibility for deadline tracking and provide timely instructions to us and keep us apprised of your contact information. 7. LIMITATION OF LIABILITY We are pleased to offer tiered levels of service to recognize different client needs and budgets. However, our limitation of liability necessarily varies to the extent you are engaging our professionals to fully understand and assist you. Therefore, in the event of any dispute or disagreement with you, for any reason whatsoever, our maximum liability to you shall not exceed the amounts listed in the table below:

ANNUAL FEE BILLINGS (EXCLUDING DISBURSEMENTS)

MAXIMUM LIABILITY

$0.00 - $10,000 Capped at the value of fee billings actually received from you More than $10,000 Capped at $1,000,000 (Canadian funds)

8. GENERAL This engagement is governed by the laws of the province of Ontario, without reference to its conflicts of laws principles, even if the dispute relates to activities in foreign jurisdictions. Any dispute or disagreement will be resolved through binding arbitration to be conducted in Toronto, Ontario. If any term herein is found to be unenforceable, it shall not affect the enforceability of the rest of the letter. We confirm that you have had an opportunity to seek independent legal advice regarding the terms herein. If arrangements are made for you to access our online client portal (“Portal”) to view and manage your files with PCK, then use of the Portal is strictly subject to the Terms of Use published on the Site and you

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Page 5 of 5 Initials:__________

accept and agree to those terms and accept all risk related to use of the Portal and agree to maintain suitable password and IT security protocols in relation to use of the Portal. Please let us know if you have any questions. If you are ready to proceed please complete, initial each page, sign and return the Engagement Letter to us. Whether or not we receive this back from you we shall assume that you are in agreement if you continue to instruct us after receipt of this letter. Yours very truly,

PERRY + CURRIER INC.

By placing my signature below, I hereby acknowledge receipt and accept the contents hereof and confirm I have the authority to contractually bind the Client indicated above. SIGNATURE: ___________________________________________ PRINTED NAME: ________________________________________ DATE: _________________________________________________ _____ By initialing here, I confirm I wish to receive occasional bulletins from PCK about

important changes to intellectual property law that may affect my business and strategy.

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Payment Form Payment Details: Please fill out the total based on the selected package(s): *If remitting in a currency other than Canadian funds, please add a 3% Foreign Exchange Handling Fee to the total.

*Additional charges apply for expedited search requests. **Above costs are estimates and subject to change

Package Name Cost

Lean Trademark Application (CAN) $950

Bespoke Trademark Application (CAN) $1310

Bespoke Tradition Trademark Application (CAN) $2000 Minimum

Lean Trademark Application (US) $1090

Bespoke Trademark Application (US) $1600

Bespoke Tradition Trademark Application (US) $2000 Minimum

Other (Please contact PCK for amount) $

TOTAL:

Search Package Name Cost

Lean Search (CAN) Includes Trademarks Register (active marks only), identical and phonetically identical marks, confusingly similar marks; Web Common Law Search

$650

Bespoke Search (CAN) Includes above searches plus Common Law Search and Internet Domain Names

$1500

Lean Search (US) Includes Trademarks Register (active marks only), identical and phonetically identical marks, confusingly similar marks; Web Common Law Search

$900

Bespoke Search (US) Includes above searches plus Common Law Search and Internet Domain Names

$2500

TOTAL:

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Payment Options:

1. Credit Card Please complete the following details as it appears on your credit card statement and telephone this information to +1-416-920-8170 or print and fax this letter to +1-416-920-1350.

I hereby authorize PCK to charge the credit card above with the amount indicated for their services. Signature of Credit Card Holder: Date (mm/dd/yy):

2. Interac Email Transfer

Please complete the below information and forward this email to [email protected] or by fax: 416-920-1350

Name:

Company:

Address:

Phone Number:

Trust/Retainer Invoice#:

Amount: $

Credit Card Type: VISA ( ) Master Card ( ) AMEX ( )

Credit Card/Security Number: Card# /Sec#

Expiry Date (mm/yy):

Name: Company: Trust/Retainer Invoice#:

Amount: $

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© 2015 Perry + Currier Inc. This form may only be used in conjunction with filing a trademark application with Perry + Currier Inc. All other use is strictly prohibited. If you do not retain Perry + Currier Inc. you must destroy this document.

Page 1 of 4

Lean Trademark Package

Canadian Trademark Application Questionnaire

Instructions:

1. Complete this form 2. Complete the engagement letter if you have not done so. 3. Complete the payment form (includes taxes and government filing fees). 4. Scan and email to [email protected]

Extra charges and delay may apply if information is not completed correctly.

IMPORTANT NOTICE: This form is intended for applicants who have a tolerance for risk in exchange for reduced fees and a streamlined process. No formal contact with a trademark professional is being offered until after the Canadian Trademark Office reviews your filing, at which point additional fees will apply. We will not review or verify the information provided when preparing and filing your trademark application. We will not search for the availability of your trademark. By completing this form, you agree that we are not providing you any counseling tailored to you and we will not be liable for any deficiencies in your trademark application. You should assume that resultant defects in the trademark application are not correctable after filing. We do not guarantee that your trademark will actually register. If at any time you are unsure or think you require assistance in filing your trademark please select our “Bespoke” or “Bespoke Tradition” Packages and one of experienced trademark professionals will be happy to meet and help you with your filing.

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© 2015 Perry + Currier Inc. This form may only be used in conjunction with filing a trademark application with Perry + Currier Inc. All other use is strictly prohibited. If you do not retain Perry + Currier Inc. you must destroy this document.

Page 2 of 4

1. What is the trademark?

You should take great care when selecting your trademark. If you need assistance, please refer to our document entitled “Trademark Selection Dos and Don’ts”. Your trademark may be EITHER a WORD OR a LOGO. Please complete ONE of the following sections: 1) If the trademark is a word, then clearly type it in the box below.

Word(s): 2) If the trademark is a logo:

Provide an electronic file in black and white .tif format. Please provide a description of any colour claim you wish to protect.

Logo Colours:

2. Who is applying for the trademark (i.e. who is the Applicant)?

If anyone has previously owned this trademark please stop and select one of our other trademark packages. The Applicant’s name MUST BE COMPLETELY accurate, including punctuation and abbreviations, at the time of filing. No amendments to the Applicant’s name are permissible after filing.

If the Applicant is an individual, please complete the following:

Full Legal Name

Address

If the Applicant is a corporation, please complete the following: Full Legal Name of Corporation

Jurisdiction of Incorporation

Registered Corporate Address of Business

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© 2015 Perry + Currier Inc. This form may only be used in conjunction with filing a trademark application with Perry + Currier Inc. All other use is strictly prohibited. If you do not retain Perry + Currier Inc. you must destroy this document.

Page 3 of 4

3. Please provide a detailed description of the goods and/or services associated with the mark in the box below. Please read the instructions below and enter the list of goods and/or services to be claimed in the application in the table of bottom of this section. A searchable list of goods and services descriptions currently acceptable to the Canadian Intellectual Property Office (CIPO) can be found online at http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr00061.html. Your application is likely to proceed more quickly and less costly if you use this list. Your application can be based on actual use and/or proposed use. Actual Use Basis Actual use is when the trademark has been continuously used with a particular good or service from the date claimed. A trademark is typically used with goods if the trademark is displayed, in the normal course of trade, on the goods or on their labelling, packaging or the like or on a point of sale display, in Canada. A trademark is typically used with services if the trademark is displayed in the performance or advertising of such services in Canada. If a use claim is being made based on advertising, the applicant must be capable of performing the service(s) associated with the mark in Canada at the time of advertisement. If the trademark has been used in Canada, please provide dates of first use for each good and/or service to be claimed in the application in the table at the end of this section. Note: If there is any uncertainty as to the date of first use, it is better to claim the latest date that you are certain that the trademark was continuously used in Canada. Any inaccuracy, even by a single day, can invalidate your trademark registration.

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© 2015 Perry + Currier Inc. This form may only be used in conjunction with filing a trademark application with Perry + Currier Inc. All other use is strictly prohibited. If you do not retain Perry + Currier Inc. you must destroy this document.

Page 4 of 4

Proposed Use Basis Proposed use is when the Trademark is planned for use in the future. If the trademark has not been used in Canada with some or all of the goods and/or services to be claimed in the application, and your business intends to market those goods and/or services in association with the trademark, then you can claim those goods and/or services on a proposed use basis. Note: You must intend to market those goods and/or services in association with the trademark, otherwise your application could be successfully challenged by third parties. You may select a maximum of ten goods or services. If you have additional goods or services please select another package. Do not feel compelled to provide ten unique goods and services, simply include what your business will use. Additional goods and/or services cannot be added after the application is filed. Dates must be provided in one of the following formats: Month-Day-Year; Month-Year; Year.

Number Goods/Services

(See: http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr00061.html for examples)

Date of First Use in Canada. Past Date = Actual Use. Future Date or No Date=Proposed Use

1 2 3 4 5 6 7 8 9 10

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© Perry + Currier Inc. 2015, all rights reserved

TRADEMARK SELECTION DOs & DON’Ts

A trademark is a valuable asset used by a person or business for the purposes of distinguishing the trademark owner’s wares and services from those of others. TRADEMARK SELECTION DOs:

1. Choose trademarks that consist of fanciful or coined marks. These marks are created from coined or made-up terms that have no meaning other than as a trademark. These are the types of trademarks you should choose. Examples EXXON for petroleum products

KODAK for cameras LULULEMON for athletic apparel

2. If you cannot develop a trademark consisting of fanciful or coined terms, chose an “arbitrary”

mark. Arbitrary marks consist of existing words that have a dictionary definition, but that definition is completely unrelated to the product or service with which the mark is used. If you cannot develop a fanciful/coined trademark, these are your second best choice. Examples APPLE for computers

MINI for automobiles TIDE for laundry detergent

3. If you cannot develop a fanciful or coined mark, or an arbitrary mark, then develop a suggestive

mark. A suggestive mark is a mark that suggests some attribute or benefit of the products or services, but stops short of merely describing the attributes of the products or services. Suggestive marks are recommended as a last resort when you cannot develop a fanciful/coined or arbitrary mark. Examples AIRBUS for planes, VOLKSWAGEN for automobiles

TRADEMARK SELECTION DON’Ts:

1. Avoid descriptive marks Descriptive marks are those which describe the products or services associated with the mark. Words that describe an attribute, feature, end result, use of the product, or the persons employed in the production of the product or are merely laudatory ("best", etc.) are not generally granted trademark protection. Descriptive marks include: a. Laudatory words that attribute superiority to the products (e.g. GOLD MEDAL or SUPREME); b. Geographic terms (e.g. Champagne); and c. Surnames.

Examples COLD AND CREAMY for ice cream

HOT & CRISPY for frozen baked products

2. Avoid generic terms Generic terms are the common name of the products or services associated with the marks. Generic terms are not registrable or protectable as trademarks. Examples COLA for cola beverages

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Canadian Trademark Application Process

(Exclusive of Extension or Default Procedures)

This document is for general information purposes and does not constitute formal professional advice.

© Perry + Currier Inc. 2015, all rights reserved

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OUR LOCATIONS

1300 Yonge Street, Suite 500, Toronto, Ontario, M4T 1X3 T. 416.920.8170, F. 416.920.1350

8 Erb Street West, Waterloo, Ontario, N2L 1S7 T. 519.883.0035


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