A reader emailed me to ask “What’s the longest a trademark application can stay pending without being approved or refused by the CIPO?” The simplistic answer is “theoretically, forever”; but I'll provide some pendency numbers—and some historical observations—in this post.
The reader may have meant to ask “What is the oldest Canadian trademark application that is still pending?” or “What is the longest time that a Canadian trademark application has taken to progress from filing to registration?” or perhaps “What is the longest time that a Canadian trademark application has remained pending before being abandoned?”
Analysis of CIPO’s trademark .xml data (as of 20-Sep-2021) reveals that the answer to the first question is application no. 1028780 which was filed on 10-Sep-1999 and has been pending for 8,046 days (22 years) as of 20-Sep-20211.
The answer to the second question is 10,294 days (28.2 years). See application no. 380832 which was filed on 25-Nov-1974 and matured to registration on 31-Jan-20032.
The answer to the third question is 18,738 days (51.3 years). See application no. 170383 which was filed on 17-Mar-1937 and abandoned on 05-Jul-1988. But quaere: the '383 application’s Action History reflects only the filing and abandonment events, as is typical for older applications; none of the intermediate prosecution events are listed in the Action History. One would have to inspect CIPO’s file for the '383 application to verify its apparent pendency for over half a century.
Note that the '780 application has been opposed and that a brief (4.5 month) portion of the '832 application’s pendency was consumed by a proposed opposition proceeding. The '383 application was filed pursuant to the Unfair Competition Act (1932) 22-23 George V c. 38, which did not provide for publication of pending trademark applications or for inter partes opposition proceedings. An opposition can add years to the time required to register a trademark. Knowing that, the reader may have meant to rephrase the question as “What is the oldest Canadian trademark application that is still pending without having been opposed?” or perhaps “What is the longest time that a Canadian trademark application has taken to progress from filing to registration without having been opposed?”
The answer to the first rephrased question is application no. 1122704 which was filed on 23-Nov-2001 and has been pending for 7,241 days (19.8 years) as of 20-Sep-2021. The '704 application has not been approved for publication in the Trademarks Journal, so the application’s potential opposition phase has not commenced.
The answer to the second rephrased question is 9,991 days (27.4 years) corresponding to application no. 315012 which was filed on 31-Jul-1968 and matured to registration on 08-Dec-1995 (without opposition). Note that although the '012 application was advertised in the Trademarks Journal on 19-Mar-1969, it was not “Formalized” until 23-Sep-1994, some 26 years after its 31-Jul-1968 “Filing” and “Created” event dates. That is curious since the “Filing”, “Created” and “Formalized” events3 typically occur simultaneously. See for example application no. 2134696 for which all 3 events occurred on 20-Sep-2021.
Before dismissing the delay in formalizing the '012 application as an anomaly, consider application nos. 325505, 325506 and 325507 which pertain to design versions of the word mark covered by the '012 application. The '505, '506 and '507 design applications each took 9,849 days (27 years) to progress from filing to registration (without opposition). The 3 design applications have 29-Aug-1969 Filing / Created event dates, but the '505 and '506 applications were not Formalized until 17-Oct-1990 (21 years later) and the '507 application was not Formalized until 15-Sep-1993 (24 years later).
The lengthy delays in formalizing the '012, '505, '506 and '507 applications are unlikely to have been an anomaly—they probably had to do with the federal government’s efforts to curtail tobacco advertising in the era spanning the applications’ pendency4.
We are left wondering “What is the longest time that a Canadian trademark application has taken to progress from filing to registration without encountering either an opposition proceeding or a disruption such as an advertising curtailment?” The answer is 9,584 days (26.3 years) corresponding to application no. 246322 which was purportedly filed on 03-Jul-1958 and matured to registration on 28-Sep-1984. The '322 application’s Action History reflects only the filing and registration events—as previously noted this is typical for older applications. None of the intermediate prosecution events are listed in the Action History, so there may have been an opposition proceeding—one would have to inspect CIPO’s file for the application to check that.
As interesting as the foregoing historical records might be, current practitioners are more likely to be interested in applications filed within the past decade or so; for example, “What is the longest time that a Canadian trademark application filed since 2010 has taken to progress from filing to registration?” The answer is 3,936 days (10.8 years) corresponding to application no. 1464561 which was filed on 04-Jan-2010 and matured to registration on 14-Oct-2020 (without opposition).
A related, albeit off-the-reader’s-topic, question is “What is the shortest time that a Canadian trademark application filed since CIF (17-Jun-2019) has taken to progress from filing to registration?” The answer is 134 days (4 months, 12 days) corresponding to application no. 1984246 which was filed on 10-Sep-2019 and matured to registration on 22-Jan-2020 (without opposition).
In a future post I’ll provide some more general statistics, e.g. minimum, maximum, average & median prosecution times for applications filed at various times.
1 Application no. 530221 has been pending for much longer than the '780 application, namely 13,485 days (36.9 years), but I have excluded it because the '221 applicant has appealed CIPO’s refusal of the application in consequence of a successful inter partes opposition proceeding. Since it has been refused (subject to the outcome of the appeal) the '221 application does not fall within the ambit of the reader’s question, strictly speaking. Moreover, the '221 application pertains to a certification mark. Certification mark applications are subject to somewhat different procedures than trademark applications. The reader who posed the question was probably referring to ordinary trademark applications.↩
2 Some practitioners may be surprised to see that the '832 applicant obtained 20 consecutive 6-month extensions of time (plus several others) and wonder “Is that the greatest number of consecutive extensions of time that CIPO has ever granted?” The answer is no—not even close.↩
3 Appendix G of CIPO’s Trademarks Data Dictionary describes these events as follows:
- Filed: The date a complete application for the registration of a trademark has been filed with the Trademarks Office.
- Created: The very first step in the automated trademarks registration process is to create a paper file in order to store all related paper documents.
- Formalized: This action will come after the “filed” action. At this stage, the application has adhered to all of the rules and regulations for the format and content on the application. The information can now be made available to the general public. ↩
4 See for example: Rob Cunningham, R.J.R.-MacDonald Inc. v. Canada (A.G.): Reflections from the Perspective of Health, (1995) 40 McGill Law Journal 229; Michael D. Parrish, On Smoke and Oakes A Comment on RJR-MacDonald Inc. v. Canada A.G., (1997) Manitoba Law Journal, Vol. 24 No. 3 pp 665-696.↩
