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.

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.

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 trademarks. 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.

Trademark Objection FAQs:

1. What is meant by Trademark Objection?

The examiner should be satisfied with the trademark it should comply with all the rules and regulations, if the examiner is unsatisfied with the trademark he may object to the trademark. An intimation will be sent to the applicant and the applicant is required to respond within thirty days.

2. Where to get the Trademark Objection report?

The trademark examination report of the objection over trademark on the website of IPI India.

3. How much time does it take to reply to a Trademark objection?

The trademark experts draft and file a reply within 3 days of raising an objection that is received subject to the available documents.

4. Is there any difference between Trademark objection and Trademark Opposition?

The trademark objection is raised by the examiner by raising questions over the criteria that are followed during registration whereas the opposition is done by a third party over the credibility of the trademark.

5. When does a trademark get Objection?

A trademark is objected to due to many reasons like the documents filed or the fulfillment of the criteria that is mandated by the rules.

6. What are the various grounds available for Objection?

Trademark objection can be raised on two grounds absolute and relative grounds.

7. What happens when the trademark reply fails to satisfy the trademark office?

In case the reply doesn’t match the criteria the trademark application gets rejected.

8. What to do if a trademark registration is rejected?

The intellectual property appellate board can be approached in case of rejection

9. Is there any government fee to file a reply for the trademark examination report?

No there is no Government fee to file for a reply.

10. Does the applicant need to be physically present during the procedure?

No, the applicant doesn’t need to be physically present. IndiaBizFiling can help you draft a reply for the trademark objection.