New Trademark Practice: No More Guaranteed Extensions of Time - Method Law Professional Corporation Toronto

The Trademarks Office recently published new practice notice indicating that applicants who are issued examiner’s reports dated on or after January 17, 2020 will no longer be guaranteed at least one six-month extension of time to file a response. Instead, the Trademarks Office will now only grant an extension of time under exceptional circumstances. Please note that applicants who were issued examiner’s reports dated prior to January 17, 2020 are still guaranteed at least one six-month extension of time.

Examples of Exceptional Circumstances as of January 17, 2020

Further examples of exceptional circumstances that more than one extension may be obtained for:

Recent change in trademark agent: There has been a very recent change in appointed trademark agent and the agent requires time to become familiar with the file.
Circumstances beyond the control of the person concerned: Examples include illness, accident, death, bankruptcy, or other serious and unforeseen circumstances.
Transfer: There is a request pending at the Office to record or register the transfer of an application or registered trademark, and said transfer would overcome a confusion objection.
Opposition: The cited co-pending and confusing trademark is the subject of a pending opposition proceeding.
Section 45: The cited registered trademark is subject to a pending section 45 proceeding.
Official mark: The applicant is in the process of actively negotiating a consent from the holder of an official mark.
Division of a Protocol application: The applicant has filed a request for the division, in respect of Canada, of the international registration on which the original Protocol application is based and is waiting on the International Bureau for notification that a divisional international registration has been created.

The Trademarks Office may grant an applicant a one-time six-month extension during the prosecution of an application if they can show that at least one of the following examples of exceptional circumstances applies to them:

1. The applicant needs to respond to an objection which could lead to a refusal under paragraphs 37(1)(b), (c) or (d) of the Trademarks Act.
  1. 1. s. 37(1)(b): The trademark is not registrable (e.g., if the trademark is primarily merely a name or surname, clearly descriptive/deceptively misdescriptive, or confusing with a registered trademark).
  1. 1. s. 37(1)(c): The applicant is not the person entitled to registration of the trademark because it is confusing with another trademark for the registration of which an application is pending.
  1. s. 37(1)(d): The trademark is not distinctive.
2. The Registrar requires evidence of distinctiveness under subsection 32(1) of the Act.

1. 1. s. 32(1)(a): The applicant claims that their trademark is registrable under subsection 12(3); i.e., their trademark is registrable despite being primarily merely a name/surname or clearly descriptive/deceptively misdescriptive.

1. 1. s. 32(1)(b): The Registrar’s preliminary view is that the trademark is not inherently distinctive.

1. 1. s. 32(1)(c): The trademark consists exclusively of a single colour or of a combination of colours without delineated contours.

1. 1. s. 32(1)(d): The trademark consists exclusively or primarily of one or more of the following signs:

1. 1. the three-dimensional shape of any of the goods specified in the application, or of an integral part or the packaging of any of those goods,
  2. a mode of packaging goods,
  3. a sound,
  4. a scent,
  5. a taste,
  6. a texture,
  7. any other prescribed sign.