2017-07-21
Filing a trademark application is only the first step in the registration process. The trademark process is actually a series of stages and can be a long and complex with several challenges. One of the biggest challenges faced is during the trademark examination stage. Objections to the registrability of your trademark application can be raised by the Examiner. So, what are trademark objections and how do you deal with them? Let us have a look.
Trademark Objections
Once you file an application, it progresses to the trademark examination stage. During this stage, an examiner at the trademark office evaluates your application. The evaluation includes checking the trademark for compliance with the law and the distinctiveness of the trademark. If the examiner determines that any part of your trademark is not in compliance with the law, then they will communicate with you their objections. A number of objections can be raised and include:
Clearly Descriptive or Deceptively Misdescriptive
If your trademark clearly describes a character or quality of your goods or services, then such a mark is clearly descriptive. For example, if you use ‘Fluffy’ for soft toys or ‘Sweet’ for Candies, then such a mark does not satisfy the distinctiveness aspect and does not qualify as a trademark. Marks that are clearly misleading, for instance ‘Sugar Sweet’ for Candies sweetened artificially, also do not qualify as trademarks and could be refused.
Confusing
Objection on the basis of confusion means that your mark is confusing with another existing trademark application or registration for the same or similar goods or services. At times, similar brand names have the potential to confuse the consumer leading to loss of reputation and business for the brands. Confusingly similar trademarks are objected to by the examiners.
Responding To Trademark Objections
Although some formalities like sufficient description of goods and services can be fulfilled through amendments, objections raised on the basis of non-compliance with the law, as mentioned above, could lead to the refusal of the trademark application. In such cases, the examiner will communicate the refusal via a letter. But, before the final refusal, you may be given a chance to clear the examiner’s doubt. You can defend the objections by a close analysis of the attributes of the mark or marks and the qualities of the products or services. The reply to objections may include:
- An answer to the objections raised
- Relevant case laws
- Supporting documents
- A proof of usage that says that the trademark has acquired the required distinctiveness and is associated with the goods and services mentioned.
When responding to an Examiner's Report, it is important to address every issue raised by the Examiner. If your answers don’t satisfy the examiner, your mark will be refused. In the case of refusal, you have the right to appeal to the Federal Court. With evidence and counter arguments, the proceedings at the Federal Court will then decide the fate of your application.
Many people make the mistake of applying for a trademark by themselves. They forget the complexity of the trademark examination process and the legal matters that need to be dealt with smartly. Without a trademark agent, you decrease your chances of registration to a huge extent and risk invalidity for small errors. Connecting with a trademark agent prior to filing your application can be beneficial, as they will be able to guide you through the trademark process.
