Why use a Trademark Agent?
A trademark agent is helpful in ensuring the application is filed properly, including that the goods and services descriptions are in conformity with the requirements, and other technical details, such as Nice Classification which is a relatively new requirement. If not, there can be delays in obtaining registration and even the possibility of having the application rejected.
Most trademark agents conduct at least preliminary searches to determine if your preferred trademark is available in association with the goods and services to be associated with the trademark. A trademark agent will also advise you if a more comprehensive full search is advisable before proceeding with the application given the proposed mark.
In addition, an agent can advise if your preferred trademark is registerable, as there are several provisions in the Trademarks Act, that prohibit the registration of certain proposed marks, such as whether the proposed mark is descriptive or deceptively misdescriptive, or primarily merely a surname. Also, trademark agents are helpful in ensuring that all goods and services are included in the application given the business of the client, including those that the client has not considered.
Agents are experienced in responding to examiner’s objections, especially if there is a confusion citation (the examiner being of the opinion that the trademark is confusing with another trademark and therefor not registerable) which can often be difficult to overcome, and must be based on various indicia of confusion as listed in the Trademarks Act.