Should I use a Trademark Agent or a Lawyer?

August 11, 2022

Now that you’re ready to register your trademark, you may be wondering who to contact to help you file your trademark application.

Is it a trademark agent or an attorney?

You may also be wondering what the difference is between a trademark agent and a trademark lawyer and the simple answer is cost.

Trademark agent vs Trademark lawyer

Non-Attorney Trademark Agents must successfully complete the Trademark Agent Exam administered by the College of Patent and Trademark Agents.  This exam is given yearly and has an average pass rate of about 15%.

In the past, lawyers would simply send an affidavit to the Canadian intellectual property office stating that they had worked in intellectual property for two years and would be granted automatic trademark agent status.

However, the government changed this rule some years ago, and now attorneys also have to complete the trademark agent exam.

Meanwhile, most attorneys chose not to write the trademark agent exam and stay away from Trademarking.

Once you have successfully completed the trademark agent exam, you become a registered trademark agent. You are allowed to prosecute trademark applications and represent clients in front of the Canadian intellectual property office and the opposition board.

The only significant difference between a registered trademark agent and an attorney is that registered trademark agents can’t go to court to litigate.

In most cases, a registered trademark agent is much more knowledgeable about trademark prosecution than an attorney who is more than likely a litigator and goes to court for trademark infringement cases.

With that said, cost is another major factor in choosing between a trademark agent or an attorney, as attorneys are bound to charge hourly rates for any trademark prosecution, including responding to office actions and reporting to their clients.

We at TM Depot do not charge hourly rates; our trademarking services are all-inclusive and include the preparation of the application and any responses to office actions, including important office actions.

TM Depot won’t charge you any additional fees for work carried out on your file down the road.

We will help you carry out a trademark search to see if your mark is available. Also, we can examine the trademark search results and notify you if it’s safe to proceed.

Our mandate allows us to ensure that your trademark is resilient by analyzing your brand name and logos to check for strengths and weaknesses and develop a lasting protection plan.

If your chosen trademark is unsafe, we’ll advise you to pick another one.

The bottom Line

Do you have more questions about trademark registration or any other aspects of trademarking?  We’d be happy to answer them.

Get in touch today. You can contact us anytime by calling 1-833 TEAM TMD (1-833-832-6863) or by sending us an email at tm@trademarkdepot.ca

 

 

Written by

Jamie Bashtanyk

CEO/Trademark Agent

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