I'm seeking a Trademark Lawyer in CANADA

Posted 5 days ago

Worldwide

Summary

Hello, I am seeking immediate legal assistance to file a Letter of Protest and potentially a concurrent Canadian Trademark Application to protect my brand name. A third party has filed a Madrid Protocol designation targeting Canada that directly overlaps with my business. I have extensive, documented prior use that predates their filing by several years. 1. The Conflicting Application Details * Mark: (Word Mark) * CIPO Application Number: (International Registration) * Current Status: FORMALIZED / Awaiting Examination * Applicant: (United Kingdom) * Classes Targeted: Class 9 (Digital books/audio), Class 16 (Printed publications), and Class 41 (Educational/coaching services) 2. My Prior Use Worldwide & Canadian Market Presence My business, has built significant common-law goodwill, digital ownership, and public exposure within Canada and worldwide long before the applicant's base filing date of December 12, 2025: * Domain Ownership: I have officially owned and maintained the domain since 2023, establishing my early, intentional claim to this brand identity. * Digital Media & Broadcasting (Class 9 & 41): My podcast, was officially launched on Spotify and YouTube on April 18, 2024 under my brand name. It has over 10,800 all-time plays, with verified Spotify analytics showing that 2.3% of the total audience is located directly within Canada. * Digital Branding & Web Presence: Wayback Machine snapshots from March 4, 2025, explicitly show the full phrase actively live on my platform, marketing courses and books. * Direct Audience Cultivation: I have an AWeber email marketing database collecting global subscribers continuously under my brand name. 3. International Context: The applicant is seeking to register this exact brand layout across multiple jurisdictions. Notably, the United States Patent and Trademark Office (USPTO) issued a Notice of Provisional Full Refusal against his U.S. extension on June 2, 2026. Before we begin, I would appreciate your professional assessment on our immediate filing strategy: * Is a Letter of Protest sufficient on its own right now? I understand it may be easier and more immediate to file a Letter of Protest to alert the examiner while the file is "Awaiting Examination". I want to know if this is enough to block him completely. * Should I file a defensive trademark application concurrently? Please advise if relying solely on the protest is too risky and whether I should simultaneously file my own Canadian trademark application to secure my priority across Classes 9, 16, and 41. 5. Available Evidence for Exhibits: I have an organized case file ready to provide as formal exhibits, including: 1. Domain registration and purchase records for thelawofbecoming.com from 2023. 2. Spotify for Creators geographic breakdown dashboard showing Canadian listenership metrics. 3. Wayback Machine historical URL logs displaying my brand structure before December 2025. 4. Stripe transaction history and AWeber subscriber logs. 5. The complete USPTO Nonfinal Office Action refusal text against the applicant. Please let me know your availability for a brief consultation and your fee structure for handling these filings. Thanks, Amorita

  • Less than 30 hrs/week
    Hourly
  • < 1 month
    Duration
  • Intermediate
    Experience Level
  • Remote Job
  • One-time project
    Project Type
Skills and Expertise
Mandatory skills
Trademark
Legal
Intellectual Property Law
Activity on this job
  • Proposals:5 to 10
  • Last viewed by client:4 days ago
  • Interviewing:
    4
  • Invites sent:
    4
  • Unanswered invites:
    1
About the client
Member since Mar 5, 2024
  • ESP
    Barcelona2:29 PM

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