An application for registration of a trademark can be objected to by the Trademark Office for several reasons. In this article, we look at the top reason for trademark objection.
Once a trademark application is filed, a Trademark Examiner examines the application and searches 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.
In case the trademark application is not made in the proper form, an objection as follows 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 the trademark application by filing a request on form TM -16.
The trademark applicant’s name must be entered properly in an application, as suggested in this article. In case of an incorrect trademark applicant name, the Trademark Examiner would object 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 an incorrect trademark applicant name by requesting to correct the trademark application by filing a request on form TM -16.
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 of Form TM-48 is not attached or incorrectly executed, the Trademark Examiner would object as follows:
“If the application has been submitted by a person other than the applicant, a duly stamped Power of Attorney in favor 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 the trademark application by filing a request on form TM -16.
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 to an incorrect address by requesting to correct the trademark application by filing a request on form TM -16.
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 to the specification of goods or services by requesting to correct the trademark application by filing a request on form TM -16.
In case, the same or similar earlier trademarks of different trademark owners are found on records in respect of the 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 of the Trade Marks Act 1999 since identical or similar marks in respect of the 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 from the applicant’s trademark, along with supporting evidence.
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 its prior use.
An objection can be raised by the Trademark Examiner, if the mark has the potential to deceive the public because of something inherent in the mark itself or its use, like the nature, quality, or geographical origin of the goods or services. An objection to a deceptive trademark can be overcome if the applicant seeks to exclude goods or services from the specification by filing Form TM-16.
We are committed to building a fair, transparent, sustainable and performance driven company for the long-term.
©2022. Trace Quality . All Rights Reserved.