Services

Canadian patent trademark lawyers patent agent trademark agent IP law firm in Vancouver BC

As an IP lawyer, I provides legal services in the following areas: patents, trademarks, industrial designs, copyright, trade secrets, domain names, licensing, and IP transactions.  I can help you obtain trademark registrations in Canada and the US, and internationally through our international associates.  

In addition to filing and prosecuting trademark applications, I also handles intellectual property legal matters such as: drafting and filing patent applications with the Canadian Intellectual Property Office (CIPO) and the United States Patent and Trademark Office (USPTO), prosecution of patent applications before the patent office, patentability searches, patent infringement opinions, patent validity opinions, preparing and filing industrial design applications with the Canadian Patent Office, preparing and filing design patent applications with the US Patent Office, domain name disputes, IP portfolio audit, IP portfolio management, copyright assignment, copyright licensing, copyright dispute and litigation, trademark assignment, trademark licensing, trademark dispute and litigation, trademark infringement opinions,trademark opposition proceedings, trademark cancellation proceedings, and preparing and filing plant breeder's rights applications.

Trademark Services

I provide the following trademark services:
  • Trademark Clearance Searches
  • Trademark Application Preparations
  • Office Action Responses
  • Statement of Use Filings
  • Trademark Monitoring
  • Trademark Assignments
  • Trademark Change of Ownership
  • Trademark Portfolio Management
  • Trademark Renewal Filings
  • Trademark Opposition Proceedings
  • Trademark Cancellation Proceedings
  • Section 45 Cancellation Proceedings
  • Enforcement Against Counterfeit and Online Infringement
  • Trademark Enforcement
Trademark Searches and Registrability Opinions
I can conduct trademark researches to determine if there are confusingly similar trademarks existing prior to filing a trademark application. Contact me to discuss your desired trademark and I can review your case at no charge and provide a flat rate quote for conducting a trademark search for your desired trademark.
Application and Registration of Trademarks in Canada and the U.S.
I can draft trademark applications that correctly identify approved lists of goods and services and dates of use. If the CIPO or the USPTO raises an objection, I can draft responses to help overcome the objections. I can provide you with flat fee quotes for fling Canadian or U.S. trademark applications.

Trademark Office Actions
Not all trademark applications go smoothly. If the CIPO or the USPTO has any concern with your trademark application they will issue a notice called an Examiner's Report or Office Action. All Office Actions are different. Some represent a denial of your application. Others are just a request for clarification or additional information. That being said, an Office Action must be responded to within six months of the date the CIPO or the USPTO issues it. The CIPO or the USPTO will not remind you that the deadline is approaching to file an Office Action response. If you do not respond, your trademark application will simply be abandoned and all of your trademark application rights (and trademark filing fee) will be lost. I can help you respond to any Office Action. Whether it is responding to an administrative request, fixing a technical requirement with the application or formulating a substantive response to a confusion objection, I can help. Since every Trademark Office Action is different I will first need to review your case and determine what needs to be done. If you email your information to me, I will review your Office Action at no charge and provide a flat rate quote to complete a response on your behalf.

Trademark Oppositions 
I can help my clients oppose confusingly similar trademarks that have been advertised in the Trademarks Journal or defend against trademark oppositions that arise during their trademark applications. If you receive a Statement of Opposition you must timely respond. If you do not, your trademark application will be cancelled by the CIPO or the USPTO. As a trademark agent and attorney, I have successfully defended and negotiated settlements of trademark oppositions in Canada and the U.S. Because each case is unique I will gladly review your case and provide a quote for engaging in settlement discussions or responding to a trademark opposition that has been filed against you.

Section 45 Cancellation Proceedings
A third party may attempt to expunge your Canadian trademark registration through a Section 45 Cancellation Proceeding. If you receive a Section 45 Cancellation Proceeding Notice against a trademark registration that you own, contact me to discuss the case and I can review your case at no charge and provide a flat rate quote to preparing and filing a response on your behalf.

Trademark Assignments
In order to transfer the ownership of a trademark, a proper “trademark assignment” must be completed and filed with the CIPO and/or the USPTO. If you do not properly transfer the trademarks, your trademark registration could become worthless due to a chain of title defect. I can assist with trademark assignments.

Trademark Renewals
Additional filings are required to maintain the registration of a trademark. If you do not make these filings your trademark will be considered abandoned by the CIPO or the USPTO and all of your trademark registration rights will be lost. In Canada, a trademark registration must be renewed every 15 years. In the United States, renewal filings are due between the fifth and sixth year of registration, at the tenth year of registration and every ten years thereafter. If you think an additional filing may be due for your trademark registration, please contact me and I can provide you with a flat rate service quote to handle any renewal filing that may be due.

Trademark Enforcement
As a trademark owner, it is important to protect your trademark against third-parties. Every trademark owner should have an enforcement plan in place to deal with copycats, infringers, counterfeiters, and any other third-party that may damage a trademark. Trademark enforcement comes in many shapes and sizes, ranging from Cease-and-Desist Letters, Take-Down Notices, settlement negotiations, to court litigation. I can help you develop a plan for your business’s budget that fits your business’s specific needs. Usually, the first steps involve Cease-and-Desist Letters and Take-Down Notices. An effective Cease-and-Desist letter puts the infringing party on notice of the trademark infringement and sets out the factual and legal basis for the claims. Many online marketplaces (e.g., Amazon, eBay, Alibaba) have trademark enforcement protocols for trademark owners to submit take-down notices and report infringing products.

Patent Services

I provide the following patent services:
  • Patent Searches
  • US Provisional Patent Application Preparation and Filings
  • Canadian and US Patent Application Preparation and Filings
  • PCT International Patent Application Preparation and Filings
  • Patent Office Action Responses
  • Monitoring Competitor's Pending Patent Applications 
  • Patent Assignments
  • Patent Change of Ownership
  • Patent Portfolio Management
  • Patent Maintenance
  • Patent Enforcement

Design Patent (or Industrial Design) Services

I have extensive experience with preparing, filing and prosecuting U.S. design patent applications (also known as industrial design applications in Canada). 

I provide the following design patent services:
  • Design Patent Searches
  • US Design Patent Application Preparation and Filings
  • Canadian Industrial Design Application Preparation and Filings
  • Design Patent Office Action Responses
  • Design Patent Assignments
  • Design Patent Change of Ownership
  • Design Patent Portfolio Management
  • Design Patent Maintenance
  • Design Patent Enforcement