Solution Of Trademark Objections

When you get a notice of objection against your application for trademark registration, it looks like someone created an interruption to your branding process. You worked so hard for this, such as selecting a perfect name for your brand, designing a unique logo, and constantly working to get popularity based on this, only you need to inform the government examiner that something is wrong.

A proper Trademark Objection Reply is required. An objection doesn't always mean the death of your brand. More often than not, the objection is an indication that the examiner needs a clearer understanding of, or more evidence to support, your application. The official terminology for an objection notice, or an "Office Action", according to the legal system, and with the right attitude and a quick response, can get your brand back on track to registration.

Follow these 5 tips from experts and be sure to resolve your trademark objection promptly:

1. First, know the reason “Why”. 

The first and most important step to resolving your issue is to identify the exact legal reason behind the trademark objection. Basically, objections against trademarks fall into 2 categories:

Absolute Grounds: This occurs when a trademark is found to be too descriptive of its goods or services (e.g., applying for the trademark "Cold Beer" for a brewery, or a surname, or a geographical name.

Relative Grounds: This happens if the examiner finds a registered trademark that is identical or similar to yours, which is likely to cause "likelihood of confusion" among consumers.

Fast Fix - Access your trademark's electronic search system (e.g., USPTO for the US, IP India) and go through the examination report. Focus on the relevant section and clauses rather than on the general explanation. Knowing exactly the "Section" of law that has been applied against your mark will enable you to develop a specific rather than a general objection response.

2. Supply Evidence of Use (Acquired Distinctiveness) 

The best way to counter an objection of your mark being too "descriptive" or "generic" is to show proof that the public already recognizes the mark as being the mark of your business. That is how you can get "Acquired Distinctiveness" established for your trademark.

Fast Fix: Show practical proof to establish that the public identifies your mark. This can include:

• Invoices showing sales over a period of time.

• Screenshots of social media profiles, advertisements, and other marketing collateral, as well as proof of advertisement expenditure.

• Press and news mentions of your brand.

• An affidavit from your customers, declaring their recognition of your mark.

This means demonstrating a "secondary meaning" to your mark to counter a general "generic" or "descriptive" objection.

3. Present the "Difference in Goods/Services" Argument. 

One common misconception about trademarks is that, once a name is registered, nobody else may use it at all. However, there are 45 classes for trademarks. Delta, while well known as an airline, is also registered for use with faucets. The mark can be used for both because there is likely to be no confusion between an airline and a faucet used in a kitchen.

Fast Fix: If the objection is made on account of similarity between your mark and an existing mark, use an argument showing the absence of conflict between both marks.

• Argue for your specific target customer base being different from that of the other party.

• Argue for the differing price points of your respective products.

• Argue that the "channels of trade" where your respective products are sold are different (e.g., if one is sold only within a hospital setting and the other is widely available in supermarkets).

When the two goods or services are unrelated, the "likelihood of confusion" is removed.

4. Request a "Consent Agreement". 

Even if the examiner finds the marks identical and cannot help you, it is still possible to avoid a legal tussle with the owner of the conflicting trademark by requesting his consent to use a similar mark.

Fast Fix: Get in touch with the owner of the conflicting trademark, and request the signature of a Consent Agreement (also known as a Coexistence Agreement) whereby the owner of the existing mark agrees to the use of a similar mark in your respective domains.

A large corporation may very well grant its consent to a small business if it is able to show no conflicting business interests. Producing a consent letter signed by the owner of the existing trademark can be the fastest way to get the objection removed.

5. Change "Goods" Description. 

The objection raised might not be against your logo or the brand name, but against the description provided of your goods/services. This kind of objection usually occurs when you have described your goods too broadly, thereby creating a potential "conflict" with other marks registered for slightly different purposes.

Fast Fix: Limit the scope of your "Goods" description. For instance, rather than defining the product as "all clothing and apparel," you might change it to "t-shirts and caps for infants," which may then successfully pass your trademark application. By providing a good description that is relevant to your reason of objection, you have removed all chances of the trademark being similar to another.

Suggestions:

Reason to fail your trademark application is by not responding to the objection within the given timeframe. Some countries provide 3-6 months for a trademark objection reply. If you failed to respond even for a single day after the deadline, your trademark application will be considered “Abandoned.”

Note: At least file your response approximately 2 weeks before the due date to deal with any unexpected factors, such as website downtime or documentation issues.

You can apply for Trademark registration in India through the IPR India Online Portal.

Conclusion:

To reply properly to remove trademark objection, you need to provide a detailed and clear description that is relevant to your reason of objection. This content will guide you to focus your attention towards legal points of trademark objection in India, identify the points of conflict between your trademark and the existing ones, and demonstrate the brand's uniqueness. In simple words, I can say that a trademark objection simply needs to be replied to in a more detailed way with more evidence or proof.