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When applying for a trademark, it's common to encounter objections from the trademark office. These objections can be based on various grounds, and it’s essential to respond properly to avoid delays or the rejection of your application. In this guide, we will walk you through the stages of receiving a trademark objection, the types of objections you may face, the detailed process to respond, examples of common objections and replies from an attorney’s perspective, as well as frequently asked questions (FAQs) about trademark objections.
Once your trademark application is submitted, it undergoes a review process by a trademark examiner at the respective trademark office. If the examiner finds any issues with the application, an objection will be raised. This objection is typically sent in writing to you or your attorney.
There are several types of trademark objections that may arise during the examination process. The most common ones include:
This is the most frequent objection raised by the trademark office. It occurs when your proposed trademark is deemed to be too similar to an existing trademark, which could confuse consumers.
If the trademark is deemed too descriptive or generic for the goods/services it represents, the application may be refused. For example, a name like "Best Pizza" for a pizza restaurant could be objected to as being too generic.
This could involve issues like missing documents, incorrect classification of goods/services, or failure to provide proper disclaimers.
This objection is raised if the examiner believes the trademark application was made in bad faith or with malicious intent, such as attempting to capitalize on another business's reputation.
If your trademark is similar to a well-known mark (even in different industries), the examiner may issue an objection based on the likelihood of dilution of the famous mark.
Once an objection is raised, it’s crucial to respond within the prescribed time frame, usually 30-60 days. Here's the step-by-step process:
Carefully analyze the objection mentioned in the Examination Report. Identify the specific issue raised and determine whether it’s a procedural issue or a substantive issue related to your trademark’s registrability.
For objections based on similarity, provide evidence showing that there is no likelihood of confusion. This can include:
Prepare a response document addressing each objection point. If necessary, amend the trademark application to resolve the issues raised. The response should be clear, well-structured, and legally sound.
Submit the response within the given time frame through the relevant online portal or by mailing the appropriate forms. Ensure you include any required evidence or documentation
Forms and Links:
After submitting the response, monitor the status of your application. If the examiner accepts your response, your trademark will proceed to registration. If the objection is not overcome, further legal steps may be necessary.
The trademark examiner raises an objection because your proposed mark "StarTech" is too similar to the existing trademark "StarTech Solutions," and it could cause confusion among consumers.
Attorney's Response:
The examiner objects to the mark "FreshBites" for a food delivery service, citing that the mark is descriptive of the services offered.
Attorney's Response:
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