The Trademark Office may object to an application for registration of a trademark for a variety of reasons. This article examines the top reasons for trademark objections and you can also get to know about how to file trademark objection reply.
Trademark Objection
After a trademark application is filed, a Trademark Examiner examines the application and searches for earlier trademarks that 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
Trademark Examiners raise objections if trademark applications are not made in the correct form. “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
A trademark application must include the applicant’s name correctly, as suggested in this article. The Trademark Examiner would raise the following objection in the case of an incorrect trademark applicant name:
“The application appears to have been filed in the name of a partnership firm; all partners of the firm should be listed using 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
Trademark Form TM-48 must always be attached to trademark applications filed by Trademark Attorneys or Trademark Agents on behalf of the applicant. The Trademark Examiner will raise the following objection if Form TM-48 is not attached or incorrectly filled out:
“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
An objection may be raised if the applicant’s principal place of business is not stated in the trademark application or if the applicant’s address for service in India is not provided:
“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
Trademark Examiners may raise an objection to a trademark application if the specification of goods or services is too vague or encompasses a large variety of goods and services in one class:
“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
If an earlier trademark of a different trademark owner is found in records for the same or similar description of goods or services, then an objection will be 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 that cannot distinguish the goods/services of one party from those of another are devoid of distinctive character and thus subject to absolute grounds for refusal. A trademark applicant can overcome an absolute ground for refusal by demonstrating that the mark has acquired a distinctive character through prior use.
Trademark is Deceptive
In some cases, the Trademark Examiner may raise an objection to a mark if something inherent in the mark or in its use has the potential to deceive the public, such as nature, quality, or geographical origin of the goods or services. A deceptive trademark objection can be overcome if the applicant files Form TM-16 to exclude goods or services from the specification.
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Tips to understand trademark registration and objection process
