Update your file numbers with CIPO (the com:ApplicantFileReference XML element)

Each one of CIPO’s trademark .xml files contains a lot of detail—including your file reference numbers.

Some of those details are exposed as searchable fields via the search interface of CIPO’s online trademark database, as shown in the adjacent image (click to enlarge the image).

Many additional details—which are not exposed as searchable fields—are exposed in the search results returned from the database, e.g. trademark agent name & address; date-specific record of prosecution events (i.e. Action History); disclaimer (if any); use authorization (if any); registrability claims (for filings pre 17-Jun-2019); etc.

But did you know that CIPO’s trademark .xml files contain (or may contain) some additional details which are not exposed by the online database—either as searchable fields or otherwise?

Here is a small extract taken from CIPO’s 2083103-00.xml file, which was included in the weekly update .zip file  CIPO released for the period 02-Feb-2021 through 08-Feb-2021 (along with thousands of other .xml files pertaining to marks which were filed or underwent any sort of prosecution, opposition, post-registration or cancellation event during the same period).

CIPO’s naming convention for its trademark .xml files is based on the application serial numbers CIPO assigns whenever a new application is filed for any mark.  Even if a mark was registered many decades ago, the name of CIPO’s .xml file for that mark will contain the serial number of the original application for registration of that mark.  The application serial numbers serve as CIPO’s primary means of identifying any mark.  It is accordingly prudent to include the application serial number in any correspondence with CIPO concerning any mark.

So, CIPO’s 2083103-00.xml file pertains to application serial no. 2083103.  If you click that link to open CIPO’s online database record for that application, you’ll see the usual details for the application, but you won't see anything corresponding to the information encapsulated by the com:ApplicantFileReference XML element depicted in the above extract.  CIPO uses that element to store the file reference number—if any—provided by the applicant’s agent (or by the applicant itself if there is no agent).

It is prudent to provide a file reference number to CIPO upon the initial filing of any application.  Besides assisting CIPO in expediting its handling of your correspondence, this enables CIPO to include your file reference number in subsequent correspondence, potentially assisting your correspondence handling, docketing and other procedures.

An .xml file pertaining to an application submitted via CIPO’s eFiling template—which includes a specific file reference number field—is more likely to include a file reference number.  An .xml file pertaining to an application submitted under the old paper filing regime may not include a file reference number—even if one was provided in the paper submission to CIPO—possibly due to the difficulty of capturing data from variable format paper submissions received by CIPO from many different agents and trademark owners.

Suppose that:

• You inadvertently omit your file reference number upon the initial filing of a new application.
• You inadvertently incorrectly specify your file reference number upon the initial filing of a new application.
• After assuming responsibility for a mark that was previously handled by another agent, you notice that CIPO is still using the former agent's file reference number in correspondence you receive from CIPO in relation to that mark.
• You assume responsibility for a mark that was previously handled by another agent who did not use file reference numbers.

A simple query based on CIPO’s XML data can reveal problems of this sort, whereupon you can ask CIPO to update its records to correctly reflect your file reference number(s).  Here for example is a small portion of the results of a query for currently active marks handled by a single agent (click to enlarge the image).  Note the two red-encircled “unknown” entries in the “Your File” column.  CIPO’s .xml files for those two applications do not contain com:ApplicantFileReference XML elements encapsulating the word “unknown”; rather, CIPO does not include a com:ApplicantFileReference XML element when it generates the .xml file for a particular application if a file reference number has not been provided for that application.  (In processing .xml files which do not include com:ApplicantFileReference XML elements, I substitute “unknown” in my database (a so-called “sentinel” value) for what would otherwise have been the agent’s or owner’s file reference number.)

Of course, your notion of “currently active marks” may differ from CIPO’s notion.  For example, suppose the owner of a trademark registration that won’t be due for renewal for five years instructs the responsible trademark agent to allow the registration to lapse on the basis that the mark is no longer in use and there is no prospect that it will ever be used.  It’s common in that scenario for the agent to close her file pertaining to the registration, mark the registration “inactive” in her docket system and notify the registrant accordingly; without taking any action vis à vis CIPO.  From the perspective of both the trademark owner and the agent, that registration is now inactive.  But from CIPO’s perspective and from the perspective of anyone who investigates CIPO’s .xml file or online database record for that registration, the registration will remain active until the expiry of the relevant renewal deadline—or possibly earlier, e.g. if the registration undergoes an uncontested and successful cancellation proceeding.

In future posts I’ll discuss some other XML elements that can be found in CIPO’s trademark .xml files, but which are not exposed by the online database—either as searchable fields or otherwise.