What is Trademark Objection and how to file a TM Objection Reply?
Overview
A trademark creates an identity for the brand and distinguishes it from other products/services in the market. Hence protecting it is crucial, if one wants to maintain it’s distinct identity. But what if someone stops you from claiming your right? For that we need to understand the concept of trademark objection.
What is trademark objection?
Trademark objection is one of the initial stages in the trademark registration process where the trademark examiner objects to your application due to certain reasons. It is not a straight forward denial to your claim, but the registrar seeks valid reasons or explanations about the mark and its registrability. He gives the applicant an opportunity to explain how the said trademark fits the criteria to avail valid registration. This is Trademark objection reply.
There are mainly two specific reasons for trademark objection:
1. Contains incomplete/wrong information
2. Similar trademarks already exist
Let’s first discuss regarding Trademark Objection raised due to errors in the application:
A trademark application needs to be perfect and without any errors
1. Incorrect details in Trademark form
If information relating to the applicant name, principal place or any other information in the trademark application is false then it most likely to raise a trademark objection.
2. Wrong filing of a Trademark form
The examiner can raise an objection if the trademark application is filed in the incorrect form. In case your trademark application is filed by a trademark attorney or agent then form TM-48 must be filed and attached to the trademark application.
Now, let us examine the grounds on which the examiner can raise an objection
A Trademark application can be objected under the more than one grounds for refusal. Following are some grounds on which an examiner can object the trademark registration:
The grounds of refusal of TM application can be divided into two parts
• Absolute grounds of refusal- refer to the incapability of marks to be distinctive or graphically presented
• Relative grounds of refusal – are always in connection with earlier trademarks and their related rights.
1. Deceptive Marks
Any trademark that is likely to spur confusion among the public or which misleads the public are deceptively similar mark. It can be about the product’s real source/ description between the related goods or services, its use, quality, and character.
2. Lack Distinctiveness
If a mark lacks distinctiveness, creates a dilemma and does not help the consumer in identifying goods or services will not get protection under trademark.
3. The existence of an Identical Trademark
When your mark is alike an already registered trademark an objection will be raised. There are plenty of trademark protection lessons to learn from famous brands where you find someone using the similar mark. The key is to avoid any confusion among the public.
4. False Specifications of goods or services
Filing a Trademark application under an incorrect class or a false description is wrong. This may lead to objections.
5. Offensive or obscene words as a part of or as a trademark
Any mark with obscene or offensive words or images as part of the trademark may face a refusal.
How to reply to the examination report?
After you receive the report, you will have to provide a detailed description of the reasons justifying, how your mark fulfils all the requirements of being a valid registrable mark. This should be done within 30 days or the mark can be abandoned. Read our blog on dealing with TM Objection raised in an examination report for more information.
Conclusion
Maintaining the brand is as crucial as creating it. The timely filing of the trademark objection reply can save your time, money and brand. Failure to do so may lead to an abandonment of the trademark application. Make sure your brand name does not fall under the grounds of refusal scrutinize the brand name well before filing the registration application to avoid any hassle.
Kahini Jhaveri
Kahini Jhaveri is an IP specialist at LegalWiz.in, with a keen interest in content creation. She holds a B.A. LLB honours from Institute of Law, Nirma University, Ahmedabad. Kahini specializes in Intellectual Properties, specifically Trademark Law.
