A trademark objection happens when a trademark examiner, public, or a third party objects to the registration of a specific trademark. The trademark examiner can object to a trademark registration application by giving valid explanations about the mark. It is not a direct denial of your claim, but the registrar gives valid reasons or explanations about the mark and its registrability. He provides the applicant with an opportunity to put forward how the said trademark fits the conditions to avail valid registration. This is a Trademark objection reply.
There are mainly two particular reasons for trademark objection:
1. Contains incomplete/wrong information
2. Similar trademarks already exist
How to file a Trademark Objection Reply
Let’s start by discussing Trademark Objection raised due to errors in the application:
A trademark application needs to be accurate and without any errors or wrong information. If there is any false information such as the wrong applicant name, principal place of business, etc. it will attract objection.
1. False details in Trademark form
If information related to the applicant name, principal place, or any other information in the trademark application is incorrect then it is quite possible to raise a trademark objection.
2. Incorrect filing of a Trademark form
The examiner can raise an objection if the trademark application is filed in the wrong form. If your trademark application is filed by a trademark agent or attorney then form TM-48 should be filed and attached to the trademark application.
Now, let us understand the things on which the examiner can raise an objection
A Trademark application can be objected to under many things for refusal. Following are some things on which an examiner can object to the trademark registration:
There are two parts under which the grounds of refusal of TM application are divided Absolute grounds of refusal- refer to the incapability of marks to be distinguishable or graphically presented
Relative grounds of refusal – are related to previous trademarks and their related rights.
1. Deceptive Marks
Any mark that can raise doubt within the consumers regarding its source, cannot get registration if a similar mark already exists.
example of a deceptively similar mark
Any trademark that is likely to create confusion within the public or which misguides the public is a deceptively similar mark. It can be related to the product’s real source/ description.
2. Lack Distinctiveness
If a mark lacks distinctiveness, creates confusion, and does not help the consumer in recognizing goods or services does not get protection under trademark.
3. The existence of an Identical Trademark
When your mark is similar to an already registered trademark an objection will be raised. There are many trademark protection lessons to take from known brands where you will find someone using the same mark. The point is to avoid any dilemma within the public.
4. False Specifications of goods or services
Filing a Trademark application under a false description is incorrect. This may lead to objections.
5. Offensive or improper words as a part of or as a trademark
Any mark with improper or offensive words or images as part of the trademark may lead to refusal.
How to reply to the examination report?
You will have to provide a detailed description of the reasons describing how your mark accomplishes all the requirements of being a valid registrable mark after you receive the report. This should be done within 30 days or the mark can be rejected.