TRADEMARK AGENT EXAM - PAPER A (PRE-
ADVERTISEMENT) QUESTIONS AND ANSWERS
What reasons can be given in support of a trademark clearance or search opinion as to whether
trademarks on the Register are likely to be an obstacle to registration? What should your approach be to
pass the test? - CORRECT ANSWER✅✅✅1. marks identical (or idea suggested by marks is the same(
2. same or unrelated goods or services
3. same channels of trade
4. *design element* can be a distinguishing factor
5. idea suggested by mark as a whole is different
6. *prohibited mark - s. 9 - PAY ATTENTION TO OWNER*
7. likely to be granted if *registered after another similar mark - PAY ATTENTION TO REGISTRATION
DATES* - i.e., 'services are related but will co-exist with BOSS MARINA which has been allowed'.
8. not an obstacle if *expunged* - look below trademark number and look *beyond related
goods/services*.
LIST AS MANY OF THESE AS POSSIBLE SO YOU GET MAXIMUM MARKS.
What are best practices and minimum requirements for dates of first use in trademark filing bases on
the basis of prior use, rather than intention to use? Cite applicable authority. - CORRECT
ANSWER✅✅✅See Practice Notice - "Specific Date of First Use".
Best practice: I advise my clients to file their trademarks listing a specific date, month, and year of first
use to avoid subsequent expungement on this basis, given that this is a strict requirement.
Minimum threshold: I advise my clients that if the mark is filed without a date, the last day of the
specified month will be used as the effective date for determining entitlement in cases of confusion,
thus it is best to specify an earlier date if one can be provided with a degree of confidence. If it is only
the year, in the absence of a month, the only latitude granted (which is very little) will be December 31st
of that year.
,Thus, I advise my clients to protect their own interests in the event of an expungement proceeding, or
an entitlement inquiry in the context of a confusion analysis, to exercise as high a degree of specificity as
they can confidently muster in determining their date of first use.
Are specimens required to file a Canadian trademark application? Cite applicable authority. Describe
what they must be if the application depicts a mark that is coloured. - CORRECT ANSWER✅✅✅No, s.
29(c) of the Regulations. The mark specimen must be the *mark as used*, thus it must contain the
colour red as it would be used in commerce.
When must colour be specified in a trademark application, and when must it be specifically included as a
literal colour? Cite applicable authority and the key consideration in determining whether the actual
colour must be outlined in the application or subsequent response to Examiner's report. - CORRECT
ANSWER✅✅✅S. 28(1) Regulations, I would advise my client that if they are claiming COLOUR as a
feature of their mark (i.e. black adidas stripes, yellow nike swoosh) that the colour should be described.
The Registrar may *require* that colour be depicted in striped lines in accordance with s. 28(2) if *the
provided description is unclear*. This is the key threshold that must be provided to gain maximum
points.
- *Always also cite generally the Trademarks Office Examination Manual.*
Must colour be claimed in an application relying on a foreign registration for priority where colour is
claimed? Cite applicable authority. - CORRECT ANSWER✅✅✅Yes, s. 30(d) of the Trademarks Act
requires that where the application is based on a foreign registration or application, its particulars must
be provided and if no prior use in Canada, must reflect
- *Always also cite generally the Trademarks Office Examination Manual.*
Cite applicable authority for a prior use filing basis. - CORRECT ANSWER✅✅✅use in canada, s.16(1)
of the Act
use abroad, s. 16(2) of the Act
- *Always also cite generally the Trademarks Office Examination Manual.*
What are the minimum information requirements you must advise your client to provide in order to
obtain a filing date (i.e. strategically obtain priority for their trademark filing)? Cite applicable authority.
- CORRECT ANSWER✅✅✅S. 30 of the Act.
- statement in ordinary commercial terms of goods/services
,- date of first use (see Practice Notice)
- address of applicant's personal office or place of business
- *registration number of foreign application and all particulars, s. 30(d)*
- certified copy of registration and $50 fee
- *Always also cite generally the Trademarks Office Examination Manual.*
Name two options for overcoming an objection on the basis of a registered s.9 official mark. Cite
applicable authority. - CORRECT ANSWER✅✅✅- not confusing *because the applied for mark does
not consist of, or so nearly resemble the official mark as to be likely to be mistaken for it, and should be
allowed* s. 9(2) of Act *excepted uses*
- obtain consent from government actor pursuant to s. 9(2)(a) of the Act *excepted uses*
- *Always also cite generally the Trademarks Office Examination Manual.*
What are 4 options for overcoming a confusion citation in an Examiner's Report? - CORRECT
ANSWER✅✅✅1. Seek to cancel for non-use pursuant to s. 45
2. Contact owner and seek consent
3. Contact owner and seek assignment or purchase registration
4. Argue that the 'difference in the marks as a whole in appearance, sound, and idea suggested are such
that there is no likelihood of confusion between the marks'
Must a prior use filing on the basis of a foreign prior use be registered in the same name, or in the name
of a predecessor in title? Cite applicable authority. - CORRECT ANSWER✅✅✅Yes, 16(2) of the Act
specifies that only 'the applicant or the applicant's predecessor in title has duly registered for the
country of origin'. *Always also cite generally the Trademarks Office Examination Manual.*
Can a prior use filing based on another country be in more than one country? - CORRECT
ANSWER✅✅✅Yes, in the case of a mark claiming multiple goods and services.
*Always also cite generally the Trademarks Office Examination Manual.* - this allows multiple countries
where use may not exist in one specific country for all enumerated goods and services.
, Can one owner register multiple similar marks? Cite applicable authority. - CORRECT
ANSWER✅✅✅Yes, slight variations in owner's name are acceptable if the same owner - under s.
15(1) of the Act, ("I-x5") 'confusing trademarks are registrable if the applicant is the owner of all such
trade-marks, which shall be known as *associated trademarks.'*
What types of clerical errors can be remedied by the Registrar? Cite applicable authority. - CORRECT
ANSWER✅✅✅s. 33(1) of the Regulations: where a request is made by an Applicant, owner, or
agent.
What is the law applicable to NL marks? Can all marks be associated with new marks? - CORRECT
ANSWER✅✅✅Trademarks registered in NL prior to April 1, 1949 don't form part of the register and
can't be associated.
What documentation is required to record a merger in trademark owners? Is there a fee? - CORRECT
ANSWER✅✅✅1. Copy of certificate of amalgamation or merger OR satisfactory evidence of merger
2. No fee
What documentation and fees are needed to record an assignment? Cite applicable authority. -
CORRECT ANSWER✅✅✅1. Copy of executed assignment OR evidence of transfer of mark
2. Prescribe fee of $100.00
3. s. 48 Trademarks Act and Regulations
Is advertising on a publicly accessible website declared under s. 9 sufficient to support a claim for
enforceability of rights under s. 9 of the Act? - CORRECT ANSWER✅✅✅Yes
Can non-Canadian entities own and request publication of a mark under s. 9? - CORRECT
ANSWER✅✅✅Yes
Cite applicable authority and test for what defines a "public authority". - CORRECT ANSWER✅✅✅- A
significant degree of control must be exercised by the appropriate government over the activities of the
body.
- The activities of the body must benefit the public.
- Ontario Association of Architects v. Association of Architectural Technologists of
ADVERTISEMENT) QUESTIONS AND ANSWERS
What reasons can be given in support of a trademark clearance or search opinion as to whether
trademarks on the Register are likely to be an obstacle to registration? What should your approach be to
pass the test? - CORRECT ANSWER✅✅✅1. marks identical (or idea suggested by marks is the same(
2. same or unrelated goods or services
3. same channels of trade
4. *design element* can be a distinguishing factor
5. idea suggested by mark as a whole is different
6. *prohibited mark - s. 9 - PAY ATTENTION TO OWNER*
7. likely to be granted if *registered after another similar mark - PAY ATTENTION TO REGISTRATION
DATES* - i.e., 'services are related but will co-exist with BOSS MARINA which has been allowed'.
8. not an obstacle if *expunged* - look below trademark number and look *beyond related
goods/services*.
LIST AS MANY OF THESE AS POSSIBLE SO YOU GET MAXIMUM MARKS.
What are best practices and minimum requirements for dates of first use in trademark filing bases on
the basis of prior use, rather than intention to use? Cite applicable authority. - CORRECT
ANSWER✅✅✅See Practice Notice - "Specific Date of First Use".
Best practice: I advise my clients to file their trademarks listing a specific date, month, and year of first
use to avoid subsequent expungement on this basis, given that this is a strict requirement.
Minimum threshold: I advise my clients that if the mark is filed without a date, the last day of the
specified month will be used as the effective date for determining entitlement in cases of confusion,
thus it is best to specify an earlier date if one can be provided with a degree of confidence. If it is only
the year, in the absence of a month, the only latitude granted (which is very little) will be December 31st
of that year.
,Thus, I advise my clients to protect their own interests in the event of an expungement proceeding, or
an entitlement inquiry in the context of a confusion analysis, to exercise as high a degree of specificity as
they can confidently muster in determining their date of first use.
Are specimens required to file a Canadian trademark application? Cite applicable authority. Describe
what they must be if the application depicts a mark that is coloured. - CORRECT ANSWER✅✅✅No, s.
29(c) of the Regulations. The mark specimen must be the *mark as used*, thus it must contain the
colour red as it would be used in commerce.
When must colour be specified in a trademark application, and when must it be specifically included as a
literal colour? Cite applicable authority and the key consideration in determining whether the actual
colour must be outlined in the application or subsequent response to Examiner's report. - CORRECT
ANSWER✅✅✅S. 28(1) Regulations, I would advise my client that if they are claiming COLOUR as a
feature of their mark (i.e. black adidas stripes, yellow nike swoosh) that the colour should be described.
The Registrar may *require* that colour be depicted in striped lines in accordance with s. 28(2) if *the
provided description is unclear*. This is the key threshold that must be provided to gain maximum
points.
- *Always also cite generally the Trademarks Office Examination Manual.*
Must colour be claimed in an application relying on a foreign registration for priority where colour is
claimed? Cite applicable authority. - CORRECT ANSWER✅✅✅Yes, s. 30(d) of the Trademarks Act
requires that where the application is based on a foreign registration or application, its particulars must
be provided and if no prior use in Canada, must reflect
- *Always also cite generally the Trademarks Office Examination Manual.*
Cite applicable authority for a prior use filing basis. - CORRECT ANSWER✅✅✅use in canada, s.16(1)
of the Act
use abroad, s. 16(2) of the Act
- *Always also cite generally the Trademarks Office Examination Manual.*
What are the minimum information requirements you must advise your client to provide in order to
obtain a filing date (i.e. strategically obtain priority for their trademark filing)? Cite applicable authority.
- CORRECT ANSWER✅✅✅S. 30 of the Act.
- statement in ordinary commercial terms of goods/services
,- date of first use (see Practice Notice)
- address of applicant's personal office or place of business
- *registration number of foreign application and all particulars, s. 30(d)*
- certified copy of registration and $50 fee
- *Always also cite generally the Trademarks Office Examination Manual.*
Name two options for overcoming an objection on the basis of a registered s.9 official mark. Cite
applicable authority. - CORRECT ANSWER✅✅✅- not confusing *because the applied for mark does
not consist of, or so nearly resemble the official mark as to be likely to be mistaken for it, and should be
allowed* s. 9(2) of Act *excepted uses*
- obtain consent from government actor pursuant to s. 9(2)(a) of the Act *excepted uses*
- *Always also cite generally the Trademarks Office Examination Manual.*
What are 4 options for overcoming a confusion citation in an Examiner's Report? - CORRECT
ANSWER✅✅✅1. Seek to cancel for non-use pursuant to s. 45
2. Contact owner and seek consent
3. Contact owner and seek assignment or purchase registration
4. Argue that the 'difference in the marks as a whole in appearance, sound, and idea suggested are such
that there is no likelihood of confusion between the marks'
Must a prior use filing on the basis of a foreign prior use be registered in the same name, or in the name
of a predecessor in title? Cite applicable authority. - CORRECT ANSWER✅✅✅Yes, 16(2) of the Act
specifies that only 'the applicant or the applicant's predecessor in title has duly registered for the
country of origin'. *Always also cite generally the Trademarks Office Examination Manual.*
Can a prior use filing based on another country be in more than one country? - CORRECT
ANSWER✅✅✅Yes, in the case of a mark claiming multiple goods and services.
*Always also cite generally the Trademarks Office Examination Manual.* - this allows multiple countries
where use may not exist in one specific country for all enumerated goods and services.
, Can one owner register multiple similar marks? Cite applicable authority. - CORRECT
ANSWER✅✅✅Yes, slight variations in owner's name are acceptable if the same owner - under s.
15(1) of the Act, ("I-x5") 'confusing trademarks are registrable if the applicant is the owner of all such
trade-marks, which shall be known as *associated trademarks.'*
What types of clerical errors can be remedied by the Registrar? Cite applicable authority. - CORRECT
ANSWER✅✅✅s. 33(1) of the Regulations: where a request is made by an Applicant, owner, or
agent.
What is the law applicable to NL marks? Can all marks be associated with new marks? - CORRECT
ANSWER✅✅✅Trademarks registered in NL prior to April 1, 1949 don't form part of the register and
can't be associated.
What documentation is required to record a merger in trademark owners? Is there a fee? - CORRECT
ANSWER✅✅✅1. Copy of certificate of amalgamation or merger OR satisfactory evidence of merger
2. No fee
What documentation and fees are needed to record an assignment? Cite applicable authority. -
CORRECT ANSWER✅✅✅1. Copy of executed assignment OR evidence of transfer of mark
2. Prescribe fee of $100.00
3. s. 48 Trademarks Act and Regulations
Is advertising on a publicly accessible website declared under s. 9 sufficient to support a claim for
enforceability of rights under s. 9 of the Act? - CORRECT ANSWER✅✅✅Yes
Can non-Canadian entities own and request publication of a mark under s. 9? - CORRECT
ANSWER✅✅✅Yes
Cite applicable authority and test for what defines a "public authority". - CORRECT ANSWER✅✅✅- A
significant degree of control must be exercised by the appropriate government over the activities of the
body.
- The activities of the body must benefit the public.
- Ontario Association of Architects v. Association of Architectural Technologists of
