Claiming services in a trademark application

Trademark applicants should be cautious about the services that they claim. If the services claimed are not beneficial to the public or if they are self-serving and only done to sell the applicant’s goods, then applications are open to opposition and trademark registrations are vulnerable to cancellation proceedings. Only claim services in a trademark application, if you are in the business of selling those services.

Services in a trademark application

For example, if you sell clothing online, then claim “online sales of clothing.” Don’t claim “website design” if you are only building or designing websites for yourself.

However, if you are building websites for others, then claim “website development for others” or “website design.”

In a second example, a marketing agency may claim one or more of the following approved services:

  • business marketing consulting services;
  • development of marketing strategies and concepts for others;
  • developing promotional campaigns for others;
  • direct marketing of the goods and services of others;
  • email services;
  • marketing analysis services;
  • marketing research;
  • providing marketing consulting in the field of social media;
  • providing marketing strategies for others;
  • search engine optimization; and
  • software as a service (SAAS) provider in the field of providing customer relations management.

A pet food brand or manufacturer, however, should not claim “pet food” for its goods and then claim the services performed by its marketing department for the sale of its own pet food in its trademark application. Claiming marketing research and marketing promotional services relating to the products of the applicant is not allowed in a trademark application.

Trademark Application

A trademark application must claim goods and/or services and describe them with terms that are acceptable to the Canadian trademark office. Applicants may claim just goods, just services, or both goods and services.

30. An applicant for the registration of a trade-mark shall file with the Registrar an application containing:

Goods and services

(a) a statement in ordinary commercial terms of the specific goods or services in association with which the mark has been or is proposed to be used;

Date of first use

(b) in the case of a trade-mark that has been used in Canada, the date from which the applicant or his named predecessors in title, if any, have so used the trade-mark in association with each of the general classes of goods or services described in the application;

Date of first use in other countries

(c) in the case of a trade-mark that has not been used in Canada but is made known in Canada, the name of a country of the Union in which it has been used by the applicant or his named predecessors in title, if any, and the date from and the manner in which the applicant or named predecessors in title have made it known in Canada in association with each of the general classes of goods or services described in the application;

http://laws-lois.justice.gc.ca/eng/acts/T-13/page-7.html#docCont

If applicants don’t comply with these requirements, their applications may be stopped by either an examiner or an opponent. If the trademark applications become registered trademarks, then someone may apply to cancel the trademarks by making an application in the Federal Court of Canada.

Compliance with Section 30(a) of the Trademarks Act.

Examples of oppositions based on non-compliance with Section 30(a) because services were found non-beneficial to the public or self-serving include Ralston Purina Co. v. Effem Foods Ltd. (1997), 81 C.P.R. (3d) 528 (T.M.O.B., per Groom) and Ralston Purina Co. v. Effem Foods Ltd. (2000), 5 C.P.R. (4th) 398 (T.M.O.B., per Herzig), where, in both, the applicant’s associated wares were “pet food” and its services “advertising, marketing and promotional services relating to the pet food products of the applicant.”

David Michaels

David Michaels, J.D., B.Eng., CHRM is a trained attorney who holds certificates in Canadian Trademark Law (2012) and Canadian Patent Law (1996) from McGill University. He has worked in the area of trademark law in Canada since 1995 and in the USA since 1993.

David is a legal blogger, brand consultant, an eCommerce entrepreneur, and an aeronautical engineer.
http://ca.linkedin.com/in/davidtmichaels/

Warning & Disclaimer: The pages, articles and comments on trademarkpro.ca do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the author’s notes of the current state of trademark law and should not be attributed as opinions of the author, his employer, clients or the sponsors of trademarkpro.ca. The author does not warrant that these notes are up-to-date. Trademark law is constantly changing and it varies between jurisdictions and even within jurisdictions. This website should not be relied upon.

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