What is a Trademark Agent?
In Canada, registered trademark agents are the only professionals permitted under the Trademarks Act (RSC 1985 c.T-13) to represent and act on behalf of trademark owners to obtain trademark registrations before the Trademarks Office. While some trademark agents may also be lawyers, this is not a pre-requisite for becoming a trademark agent.
The role of a trademark agent includes preparing, filing and prosecuting applications for registration of trademarks; giving opinions on the registrability of trademarks in accordance with criteria imposed by the law procedure and practice and conducting searches to see whether likelihood of confusion might exist between the trademark searched and trademarks or trade names of others.
The registration of a trademark is not automatic. The Registrar must approve the application for registration for its publication in the Trademarks Journal. If an objection is raised by the Registrar or if anyone files an opposition to such application after its publication, the trademark agent drafts an appropriate response or prosecutes the opposition proceedings to defend the client's interests and presents appropriate evidence and argument to convince the Registrar that the subject trademark is registrable. A trademark agent may also initiate cancellation proceedings against other registered trademarks on behalf of their clients.
A trademark agent must have thorough knowledge of the Trademarks Act as well as the related rules, jurisprudence and Trademarks Office practice. A trademark agent must have good communication skills, both in writing and in person, with clients, other legal professionals, advertising agents, Registry officials and foreign associates, and in order to prepare search opinions, responses to examiner’s reports and written arguments for use in an opposition.
A trademark agent advises and serves trademark owners in the maintenance and protection of their trademarks so that they remain distinctive and are properly used. A trademark agent also assists trademark owners with trademark licensing and franchising so that the distinctiveness and enforceability of the trademarks are maintained, failing which they are vulnerable to expungement from the register.
A trademark agent also assists trademark owners by recording any change of ownership of registered trademarks, security agreements affecting trademarks and the like, as well as attending to renewal of trademark registrations at the Trademarks Office.
A trademark agent may also assist trademark owners by managing their trademark portfolio internationally. This involves liaising with foreign trademark professionals and monitoring foreign applications and registrations.
Most trademark owners choose representation by a registered trademark agent for their knowledge of the Trademarks Act as well as the related rules, jurisprudence, and Trademarks Office practice.