Canadian Trademark Application

The filing of a trademark application with the Canadian Trademark Office begins the process of securing a mark throughout Canada. We generally estimate about US $1000.00 to put a single application on file. As Canada does not classify, all goods and services to provided under the mark may be specified in a single application.

Once filed, as in the U.S., a trademark examiner will pick up the application after filing to examine it for formal requirements and anticipations. Argument is usually required to overcome objections on these grounds, if any.

After examination, the application is then "advertised" for opposition in the Canadian Trade-Marks Journal where interested persons have a period of two months to object to registration of the mark. If there is no opposition during the two-month period following advertisement, the application should proceed to allowance. Finally, after an appropriate Declaration of Use is received, the Patent Office will issue a Certificate of Registration for the mark.

Canadian Plaintiff Uses the U.S. Anti-Cybersquatting Consumer Protection Act ("ACPA") to Get Domain Name

A U.S. Court applied U.S. cybersquatting law to wrest control of a domain name from one Canadian to another. Plaintiff Heathmount A.E. Corporation announced plans to build a sports entertainment complex in the Canada advertised as "Destination: Technodome." Soon after, Canadian resident Mr. Elliot Salmons registered the domain names "technodome.com" and "destination-technodome.com" with U.S. based Network Solutions, Inc. Heathmount thereafter filed an "in rem" action (against the "thing") opposing Salmons' domain names under the Anti- Cybersquatting Consumer Protection Act ("ACPA"). Under the ACPA, in order to proceed in rem, a plaintiff must disprove personal jurisdiction by showing the domain name owner cannot be located after due diligence or that the owner is not subject to personal jurisdiction within any judicial district within the U.S. Applying U.S. cybersquatting law (based on Salmons' registration with U.S. based Network Solutions, Inc.), the court allowed the in rem proceeding, finding that Heathmount exercised due diligence in attempting to uncover information about Mr. Salmons, and ultimately held for Heathmount.

The decision carries profound implications for Canadians. It could potentially subject any Canadian who uses a U.S. domain name registrar, to U.S. anti-cybersquatting law.