IP Services
Trademarks
Trademarks are essential to establishing and maintaining a company’s brand in the marketplace. We know our clients make significant investments in their trademarks and we work to ensure they are protected. This includes providing advice before clients launch new products and services to ensure trademarks are available for use.
We will conduct preliminary searches to obtain clearance and registration, and manage the entire process from filing onwards. We also provide guidance on filing for international trademark protection, which is becoming more and more crucial in our global economy. Clients also look to us for advice regarding the validity of their trademarks and possible infringement issues.
Have a question for one of our trademark professionals? Check out our list below to see which members of our team can help you get started.
Our People
Timothy Bourne
Lawyer, Patent & Trademark Agent - Partner
- 613-236-3807
- tbourne@ridoutmaybee.com
Mitchell Charness
Lawyer, Patent & Trademark Agent - Partner*
- 613-566-2052
- mcharness@ridoutmaybee.com
Giselle Chin
Lawyer, Patent & Trademark Agent - Associate
- 905-363-3625
- gchin@ridoutmaybee.com
Dino Clarizio
Lawyer, Senior Litigator, Patent and Trademark Agent - Partner
- 416-865-3520
- dclarizio@ridoutmaybee.com
Peter Everitt
Lawyer, Patent & Trademark Agent - Partner*
- 905-363-3630
- peveritt@ridoutmaybee.com
Marcus Gallie
Lawyer, Patent & Trademark Agent - Partner*
- 613-566-2057
- mgallie@ridoutmaybee.com
David Heller
Lawyer, Patent & Trademark Agent - Partner*
- 416-865-3505
- dheller@ridoutmaybee.com
Roland Joachim
Lawyer, Patent & Trademark Agent - Partner*
- 416-865-3507
- rjoachim@ridoutmaybee.com
Steven Leach
Lawyer, Patent & Trademark Agent - Partner*
- 905-363-3620
- sleach@ridoutmaybee.com
Daphne Maravei
Lawyer, Patent & Trademark Agent - Partner
- 613-288-8015
- dmaravei@ridoutmaybee.com
Zhengxiao (Roy) Yang
Lawyer, Patent & Trademark Agent - Associate
- 613-288-8016
- ryang@ridoutmaybee.com
Recent IP & Firm News
Update on the Speed of Trademark Examination
CIPO issues AI-backed pre-assessment letters to accelerate the prosecution of pending trademark applications.
Ridout & Maybee LLP is proud to have been chosen by Amazon to offer trademark law services to help sellers protect their brands in Amazon’s online marketplace.
The Canadian Intellectual Property Office (CIPO) has published two new Practice Notices which attempt to address the current delays in processing of trademark examinations at CIPO.
In The News: Ottawa law firms join program aimed at protecting Amazon merchants' IP
Tim Bourne, an Ottawa-based partner at Ridout & Maybee, says the trademark application process, which often takes up to three years to complete, can be “a little daunting” for small businesses.
Webinar: Strategies for Managing a Canadian Trademark Portfolio in the COVID Recovery Economy
On April 28, join speakers Elliott Gold and Joanna Pitkin for a comprehensive webinar on the strategies for managing a Canadian trademark portfolio in the COVID recovery economy.
Expedited examination available in Canada for trademark applications related to COVID-19
Effective December 14, 2020, an applicant may request expedited examination under a pilot initiative for a trademark application associated with medical goods or services related to COVID-19 in Canada.
Depreciation of goodwill with cannabis trademarks
The legalization of recreational cannabis in Canada in 2018 was accompanied, naturally, by an increase in cannabis-related trademark use, often with humorous or satirical undertones, such as Fifty Shades of Green and High Park. Not everyone, however, is laughing.
Solutions for the Complications of Canada’s Trademark Registration Process
There are several aspects of Canada's trademark registration process that are challenging, as compared to other countries. Because Ridout & Maybee LLP has been operating for over 125 years, we have developed practical solutions for dealing with these complications. While our clients’ associated frustrations have not been eliminated, we are happy to report that we have been able to drastically reduce them.
Deadline Extensions at the Canadian Intellectual Property Office Due To COVID-19
In a notice dated March 16, 2020, the Canadian Intellectual Property Office has announced that they are invoking “unforeseen circumstances” and “public interest” provisions to implement extensions of time limits for all deadlines fixed under the Patent Act, the Trademarks Act, and the Industrial Design Act.
As discussed previously, significant changes are coming to Canada’s trademark legislation, including an overhaul of use requirements and the adoption of the Madrid System.
Update: Navigating Québec French Language Requirements
On November 9, 2016, final amendments to the Regulation respecting the language of commerce and business and the Regulation defining the scope of the expression “markedly predominant” for the purposes of Charter of the French Language were published and registered in the Gazette officielle du Québec.
The International Classification of Goods and Services for the Purposes of the Registration of Marks was established by the Nice Agreement concluded on June 15, 1957. The 11th Edition of the Nice Classification, as it also is known, came into effect on January 1, 2017.
The Enforcement of US Trademarks against Business Activities in Canada
On August 26, 2016, the United States Court of Appeals for the Ninth Circuit issued the decision in the case of Trader Joe’s v. Michael Norman Hallatt, holding that the Lanham Act may be enforceable in cases even where most of the defendant’s infringing acts happen in Canada.
En Français S’il Vous Plait: Navigating Québec French Language Requirements
Doing business in Québec can sometimes pose unique challenges for trademark owners. The Québec Charter of the French Language defines French as the official language of Québec, including as the language of business and commerce.
The Canadian Intellectual Property Office (CIPO) has confirmed what many have suspected. Class-based fees are coming to Canada. As a result, Applicants with multi-class applications may benefit from filing now, before these changes come into effect, likely in 2018.
Brexit and Your Intellectual Property: Is it Business as Usual?
The historic United Kingdom vote to leave the European Union will have resounding effects, including upon some forms of intellectual property rights. At present there is tremendous uncertainty over what will happen next in the process, but the following is based on preliminary comments that we have received from our UK and European colleagues on the issue.
Recent Changes To European Community Trademarks
The most important changes include: (a) goods and services that are currently described using just a category heading (that is, without listing each type of product encompassed by the heading) will be limited to those specific goods identified in the heading unless a broader description is submitted by September 24, 2016;
Communications Privilege Extended to Patent and Trademark Agents in Canada
Bill C-59, the Economic Action Plan 2015 Act, No 1, received Royal Assent on June 23, 2015 and has passed into law. The Bill presents amendments which introduce several changes to the Patent Act, Trademarks Act and Industrial Design Act.
The owner of a Canadian trademark registration can now file a Request for Assistance (RFA) application with the Canada Border Services Agency (CBSA), as can the owner of a registered or unregistered copyright.
Major Changes to Canadian Trademark Registration System On The Way
In preparation for Canada’s upcoming adherence to the Madrid Protocol and Singapore Treaty (together, the main system for registering trademarks in multiple jurisdictions), substantial amendments to the Trademarks Act were passed into law in June 2014 (“2014 Amendments”).
On January 27, 2014, five multilateral treaties pertaining to patents, trademarks and industrial designs were tabled before the Canadian Parliament, thus beginning the process of ratifying and implementing these treaties.
Domain Name Update: Opening of Trademark Clearinghouse for New gTLDs
The Internet Corporation for Assigned Names and Numbers (“ICANN”) is currently overseeing a process by which new generic top level domains (“gTLDs”) will be made available to the public.
As in the United States, Canadian trademark applications must contain a basis for registration (a claim to the right to register). Amongst these possible bases is use and registration in applicant’s country of origin pursuant to the provisions of Section 16(2) of the Trademarks Act.
Proposed Bill Targets New Enforcement and Anti-Counterfeiting Initiatives
The Canadian Government introduced Bill C-56 on March 1, 2013. The Bill focuses on curtailing counterfeit activity and amends the Copyright Act and the Trademarks Act to add new civil and criminal remedies and new border measures in both Acts, in order to strengthen the enforcement of copyright and trademark rights.
Practice Notice – Acceptance of Sound Mark Applications
The Canadian Trademarks Office now is accepting applications for sound marks.
In September 2011, the rollout of the .xxx domain will commence. Domain names incorporating the .xxx top level domain (“TLD”) are intended to be used for adult entertainment websites. However, brand owners outside of the adult entertainment industry should take notice since a party may attempt to register a .xxx domain name incorporating a brand owner’s trademark.
Upcoming Launch of Additional Top Level Domains
Recently, the Internet Corporation for Assigned Names and Numbers (“ICANN”) voted to accept applications for new top level domains (“TLDs”).
Supreme Court of Canada Clarifies Test for Likelihood of Confusion in Masterpiece v. Alavida
In its May 26, 2011 decision, the Supreme Court of Canada reversed the Federal Court’s finding of no likelihood of confusion between Alavida’s registered trademark MASTERPIECE LIVING and Masterpiece Inc.’s previously-used trademark MASTERPIECE ART OF LIVING.
.co Domain Names Available to Trademark Owners on April 26
On April 26, parties who own a registered trademark in any jurisdiction may apply for a .co domain name. .co is formerly the top level country code for Columbia and .co domain names are regarded as having some value as an abbreviation for the term “company”.
Trademarks – Extensions of Time in Examination
The Canadian Intellectual Property Office recently published a new practice notice titled “Extensions of Time in Examination”, which takes effect on March 11, 2010.
In Nuclear Power Business, Not Relevant That Homer Simpson May Be Confused
The plaintiff Atomic Energy of Canada Limited (AECL) was a Canadian crown corporation. The defendants AREVA and AREVA Canada were, respectively, a French majority state-owned corporation and its Canadian subsidiary. The parties competed in the provision of nuclear wares and services. All existing nuclear reactors in Canada used AECL’s CANDU technology.
Facebook recently announced that as of 12:01 AM EDT on Saturday June 13, 2009, it will permit users to register personalized usernames as URLs.
New Trademark Opposition Board Procedures
The Canadian Intellectual Property Office has recently published a new practice notice entitled “Practice in Trademark Opposition Proceedings” which, effective March 31, 2009, introduces a number of changes to opposition proceedings in Canada.
.TEL Domain Name Registration Information
What is a .TEL Domain Name? .TEL domain names will permit owners to manage and exchange contact information about people and companies.
Practice Alert – Canada – Trademarks Opposition Rules Changing
Effective October 1, 2007, trademarks opposition practice in Canada is changing in several respects, most of which relate to the length of time for taking particular steps in the proceedings.
Practice Alert – Canada – Trademark Requirement Removed
In a surprising turn of events, the Canadian Trademarks Office has reversed its practice with respect to disclaimers.