A trademark is a logo (emblem), symbol, tagline (promotional sentence), or a combination of both that identifies a brand. After trademark registration online often during the registration process, the trademark registrar raises objections to the intended (premeditated) trademark in violation of the rules and regulations of trademark registration. Therefore, the status changes from marked for exam to objected. So, here I have explained what does trademark status objected means and how to fix it.
In case of trademark status objected, a long comprehensive reply should be filed within one month from the objection issue date.
If the Examiner/Registrar raises objections in the examination report, the status of your Trademark Application will appear as Objected.
After the application scrutinizes, the examiner can raise the objections under the Trademarks Act Section 9 & 11.
For example, there may be chances of objections under section 9 when the examiner or registrar considers the trademark to be generic/plausible/indicating the nature of the goods or the quality of the goods.
- It is necessary to show that the trademark is characteristically distinctive.
- To avoid objection, you have to develop a unique character. For this purpose, the users need to submit an affidavit with decent proof that the trademark has acquired distinctiveness.
Reasons for a Trademark Status Objection
The Trademark Examiner examines a trademark application to ensure the application does not conflict with any trademark rules. A trademark application may face objection for any of the following reasons:
- Filing of Incorrect Trademark Form
If the application is not in the correct format, the examiner can raise an objection.
For example, Form TM-4 for registration of aggregate marks for goods and services in any one category.
There is Form TM-51 for registration of trademark under various classes of goods and services.
- Wrong Trademark applicant name
The trademark should be registered in the original name of the applicant and double-checked for the correct spelling.
- Use of masquerading (distracting) and offensive (angry) words:
Trademark names that contain misleading words or attempt to deceive or mislead customers with wrong descriptions of products or services will be rejected.
For example, a brand called "vanilla chocolate" that sells chocolate flavours may be considered misleading.
At the same time, applications registering for trademarks with objectionable terms will be rejected.
- Inadequate information on goods/services
When a trademark application fails to mention the business products and services, the Trademark Examiner may likely reject the application due to unclear information.
- Existence of an identification mark
The trademark you want does not have to be the same as a mark that is already in business. The Trademark Examiner can raise objections under the Trademark Act, which states that it may create confusion among the public.
How to file a Trademark Objection Response?
When an objection is put up, the Trademark Status will be marked as Objected (Objection Raised).
Following are the steps to file a response in case of Trademark Objection:
Step 1: Analysis of Trademark Objection
The first step involves careful analysis and study of the objection, as any ambiguity in understanding it can lead to incorrect filing of Trademark Objection Response.
Step 2: Draft Trademark Objection Response
Make it ready. The next step is to prepare a trademark reply response that should include the following:
- The appropriate response to the objection raised with rules and precedents supporting the law and judgments supporting the case
- Distinguish between the opponent's mark and the applicant's mark. Other supporting documents and evidence to support the response do validate.
- An affidavit of the use of the trademark in the applicant's website and social media channels; Advertisement in media, publicity material Availability of trademarked products on e-commerce sites along with documentary proof for the same
- The response draft is then filed online on the Trademark e-filing portal.
Step 3: Trademark Hearing
If the response is accepted the application will process for registration and advertisement in the Trademark Journal.
If this is not accepted or there are additional clarifications sought by the trademark examiner a trademark hearing will be organized and, the same will be notified with a notice.
Step 4: Publication in the Trademark Journal
If the result at the hearing is positive, that mark shall be accepted and ordered to be printed in the Trademark Journal with the following details.
Business Entity Type LLP Private - Limited or LLC Business Name and contact details such as email address and mobile number.
In the event of a negative result, a refusal order shall pass, explaining the reason for the refusal. The applicant shall still have the option of appealing by filing a review petition within 30 days from the date of mention of the order refusing to mention that order.
Step 5: Registration
Once your trademark posts in the Trademark Journal, it will be open for scrutiny for four months.
If no third-party protest files within that period, the mark will proceed to registration and, a registration certificate will issue.
If the objection is lodged then the opposition action will be taken, as per the prescribed rules of law.
Required Documents for Reply to Trademark Status Objected
- Authorization letter
- Affidavit of Use
- Exam Report
- Trademark Hearing Notice
- Documentary proof of the trademark in commercial use.
- The duly appointed applicant or advocate will have to appear before the authorities on the stipulated date.