Trademark Objection Reply
TRADEMARK OBJECTION
An application for registration of a trademark can be objected by the Trademark Office for a number of reasons. In this article, we look at the top reason for trademark objection.
Once a trademark application is filed, a Trademark Examiner examines the the application and makes a search of earlier trademarks – which are identical or similar to the mark being examined. The findings of the Trademark Examiner are compiled as the trademark examination report.
REASONS FOR TRADEMARK OBJECTION
- Use of Incorrect Trademark Form
In case the trademark application is not made on the proper form, an objection as following is raised by the Trademark Examiner.
“The application is made on form TM-1, for certification mark in respect of goods or services falling in a class, the form of the application should be corrected as TM-4 by filing a request on form TM-16.”
Corrective Action: The applicant can overcome this objection by requesting to correct trademark application by filing a request on form TM -16.
- Incorrect Trademark Applicant Name
The trademark applicant name must be entered properly in an application, as suggested in this article. In case of incorrect trademark applicant name, the Trademark Examiner would raise an objection as follows:
“The application appears to have been filed in the name of a partnership firm, names of all Partners of the firm should be brought on record by filing a request form TM-16”
Corrective Action: The applicant can overcome an objection for incorrect trademark applicant name by requesting to correct trademark application by filing a request on form TM -16.
- Failure to File Trademark Form TM-48
Whenever a trademark application is filed by a Trademark Attorney or Trademark Agent on behalf of the applicant, Trademark Form TM-48 must be attached. In case Form TM-48 is not attached or incorrectly executed, the Trademark Examiner would raise and objection as following:
“The application has been submitted by a person other than the applicant, a duly stamped Power of Attorney in favour of a particular agent should be filed.”
Corrective Action: The applicant can overcome an objection for failure or incorrect Form TM-48 filing by requesting to correct trademark application by filing a request on form TM -16.
- Incorrect Address on Trademark Application
In case a trademark application has not mentioned the principal place of business of the applicant or if the applicant’s address for service in India is not mentioned, then an objection can be raised as under:
“The Principal Place of business of the applicant should be brought on record by filing a request on form TM-16” or “The applicant’s address for service in India should be brought on record by filing a request on form TM-16, since the applicant has no principal place of business in India.”
Corrective Action: The applicant can overcome an objection for incorrect address by requesting to correct trademark application by filing a request on form TM -16.
- Vague Specification of Goods or Services
In a trademark application, if the specification of goods or services is too vague or encompasses a large variety of goods and services in a class, then an objection can be raised by the Trademark Examiner as follows:
“The specification of goods/services mentioned in respect of class xx, is very vague and wide. You should provide exact items in respect of which the trademark is sought to be registered, by filing a request on form TM-16.”
Corrective Action: The applicant can overcome an objection on the specification of goods or services by requesting to correct trademark application by filing a request on form TM -16.
- Same or Similar Trademark Exists
In case, same or similar earlier trademarks of different trademark owner are found on records in respect of same or similar description of goods or services, then an objection is raised as follows:
“The trademark applied for registration is not registrable under Section 11(1) of the Trade Marks Act 1999 since identical or similar marks in respect of identical or similar description of goods or services are there on records and because of such identity or similarity of marks and goods or services there exists a likelihood of confusion on the part of the public.”
Corrective Action: The applicant can submit a reply to the trademark examination report by stating that trademarks cited as conflicting marks in the examination report are different than the applicant’s trademark, along with supporting evidence.
- Trademark Lacks Distinctive Character
Trademarks which are not capable of distinguishing the goods/services of one person from those of another person are devoid of distinctive character and thus liable for objection under absolute grounds for refusal of trademark. To overcome a trademark objection under absolute grounds for refusal, the trademark applicant can submit proof to show that the mark has acquired a distinctive character by virtue of its prior use.
- Trademark is Deceptive
An objection can be raised by the Trademark Examiner, if the mark has potential for deception of the public by reason of something inherent in the mark itself or in its use, like nature, quality or geographical origin of the goods or services. An objection as to deceptive trademark can be overcome if the applicant seeks to exclude goods or services from the specification by filing Form TM-16.
HOW TRADEMARK OBJECTIONS WORK
Suppose you have a trademark that someone else is using without your permission. In that case, you can send them a letter claiming their trademark to be confusingly similar to yours. If they don’t respond to your claim within the allotted time frame, then it becomes an official objection. But what happens if the marketer that claims your trademark objecting doesn’t respond? You still have a chance at winning the case. The law states that if another party has used or started to use your mark in commerce and no one objects, then they own it. This type of automatic ownership of trademarks is known as constructive notice. So, even though the other party didn’t respond to your objection, you still have ownership of your trademark because they were using it before you objected against them.
HOW TO FILE A REPLY TO OBJECTED TRADEMARK
- Trademark Objection Response: Objected is the application’s status when the registrar believes the application is liable for objection. Upon receiving the examination report, the trademark agent will be informed of the reason for the objection. The applicant has 30 days to reply to the same.
- Analyse The Examination Report: The first step is to analyse the examination report and determine the reason for the objection.
- Draft Reply To Objection: The next step is to prepare an objection reply, including proper response to the objection raised, supporting law and judgments, and other supporting documents and evidence that validates the response.
- Timelines For Reply: The reply to the objection must be filed with supporting documents within 30 days of receiving the examination report.
- If The Reply Is Accepted: If the response is accepted, the application will be processed further for registration and publication in the trademark journal.
- If It Is Not Accepted: The trademark agent will be notified when the matter is scheduled for a hearing if the registry does not accept it.
DOCUMENTS REQUIRED
It is required to submit a formal response to the examination report with detailed clarifications as to why the application should be accepted. The following documents are required.
- The legal power of attorney
- Response to an examination report
- The evidence of trademark use in commercial activities includes invoices, letterheads, communications, visiting cards, screenshots of websites, brochures, and other evidence of trademarks.
