Office actions and responses
This domain tests how you triage an examiner's report, choose between argument, amendment and evidence, and avoid procedural forfeiture.
Anatomy and triage
- Read the report as a set of independent objections. Each needs a disposition: argue, amend, or file evidence.
- Classify each objection as formal (fixable by amendment), substantive (argue or evidence), or blocking (section 9 official marks, primarily merely a surname).
- Check the status and age of every cited mark. A citation that has been registered for more than three years and is unused may be vulnerable to a section 45 request or an expungement action - but that takes time, and the applicant must decide whether to wait or amend.
Evidence that works
- An affidavit or statutory declaration from an officer of the client, with exhibits: invoices, packaging, advertising expenditures, media coverage, sales figures, social media metrics.
- Evidence must relate to Canada and to the material date for the ground in issue.
- State of the register evidence is admissible but carries limited weight unless supported by evidence of actual marketplace use.
- Avoid conclusions of law and unsupported hearsay; the affiant should speak to facts within personal knowledge.
Worked example
A citation under s. 12(1)(d) blocks VERDANT for cosmetics. The cited mark is VERDANT for skin cream. Resemblance is high and the goods overlap, so arguing confusion is unlikely to succeed on its own. Better options, in order: narrow the applicant's goods to a subcategory with different channels (for example, professional salon products), gather coexistence evidence showing years of simultaneous use without confusion, or challenge the citation. If a consent is obtained, file it with the coexistence evidence rather than alone.
Traps that cost marks
- Requesting an extension on the last day and losing the chance to amend.
- Filing evidence that is not properly sworn or notarized.
- Using the wrong material date for each ground.
- Treating a second report as final when further amendment or a s. 56 appeal remains available.