The Trademarks Office provides six months to file a response to an examiner’s report issued against a trademark application. There are limited situations where this six-month period may be extended.
The Canadian Intellectual Property Office (“CIPO”) provides a list of example exceptional circumstances that would justify an extension of time to respond to the examiner, namely:
- A recent change in the appointed trademark agent, since an agent requires time to familiarize themselves with the file;
- Unprecedented circumstances beyond the applicant’s control, including illness, accident, death, and/or bankruptcy or other serious an unforeseen circumstances;
- A pending request at the Trademarks Office to record or register the transfer of a trademark application or registered trademark, which would overcome a confusion objection;
- The cited co-pending and confusing trademark is the subject of a pending opposition proceeding;
- The cited registered mark is subject to a pending section 45 proceeding;
- The applicant is in the process of actively negotiating a consent from the holder of an official mark;
- The applicant filed a request for the division of an international trademark registration and is waiting for notification that a divisional registration has been created;
- The applicant filed a request for the limitation or cancellation of some of the goods or services of an international application that would overcome an objection;
- The applicant is responding to an objection that the trademark is not registrable or the applicant is not entitled to registration since their trademark is confusing with another earlier filed trademark application or the trademark is not distinctive; and
- The applicant is in the process of compiling sufficient evidence to show that the trademark was distinctive at the filing date of the application.
If the applicant’s request for an extension of time has been rejected (and once the timeframe to respond to the examiner has expired), CIPO will issue a default notice giving an additional two months after the date of the notice of the default in which to respond to the examiner’s report. If no response is submitted during this two-month period, the application will be deemed abandoned.
This article is provided for informational purposes only and is not legal advice. For further information or assistance in filing a trademark application or a request for expedited examination, please contact us by phone (416) 847-0054 or by email at mail@methodlaw.ca.
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