Consultation- A LegalVista Trademark Expert would determine the reason for the objection and determine a course of action to address the concerns of the Trademark Examiner – cited in the Trademark Examination report.
Reply Drafting- Based on the discussion and course of action decided, a reply letter is drafted by a LegalVista Trademark Expert.
Reply Filing- On obtaining the consent of the applicant, the Trademark Reply is filed with the Trademark Registry and the processing of the application is tracked.
IMPORTANCE OF REPLYING TO TRADEMARK OBJECTION
Respond Professionally – It’s important that a professional response be drafted as a reply to the objection raised by a Trademark Examiner. An experienced professional can significantly improve chances of successful trademark registration by filing a professional response, addressing all the concerns cited in the Trademark Examination report.
Process – Filing a response to the objections raised by a Trademark Examiner in the Trademark Examination report does not guarantee registration of the trademark. Trademark registration is a process and registration is provided only by the Trademark Registrar – based on the facts of each case. Hence, our professionals can only make best efforts for registration based on expertise.
Timeline – Post filing of a trademark application, it is important to periodically check the status of the trademark application until its processing on the Government side. Trademark registration sometimes requires various time-bound response or action from the applicant. Hence, it’s important to continually check the status of the application and take required action until registration.
Trademark Journal – Trade Mark Journal is an official gazette of the Trade Marks Registry. If the Trademark Examiner determines that the reply to the objection sufficiently addresses all concerns cited in the Trademark Examination report, the trademark is advertised in the Trademark Journal. While the application is advertised, third-parties have an opportunity to oppose the registration of the mark.
Trademark Objection – As per the Trademark Act, any person can file notice of opposition against a trademark application within a period of four months from the date on which the mark is advertised or re-advertised in the Trademark Journal. After receiving the notice of opposition, the applicant is required to file a counter statement within two months.
Trademark Objection refers to an objection raised by the trademarks examiner to register your trademark on different grounds which may include any one of the following:
- The trademark appears to be similar to an existing mark in the trademark database.
- The trademark contains phrases or symbols deemed to be offensive.
- Trademarks which make use of geographical names or international proprietary names.
- Trademark is identical or descriptive of goods/general//indicating quality or nature of goods.
If trademark appears to be in violation any of the points above, then the trademarks examiner can raise an objection and your mark will stand termed as ‘Objected’.
Once the Trademark is Published in Trademark’s journal, there is a four-month window that will be given to the general public to raise the trademark opposition. Trademark opposition comes after the trademark objection gets cleared and the TM is already advertised or re-advertised in the TM Journal.
Yes, you can file the TM objection reply by your own, but hiring a Trademark attorney will always help as these people always have the experience of drafting replies to the point and the same will always help to add the value and get your TM application registered.
Once objection is raised by the trademark examiner, you must file the reply within 30 days to avoid the trademark being ruined or we should say abandoned.
If 30 days has passed off from the issue of the TM Examination report, you can file the reply, if the status is still showing awaiting for the reply of examination report and not abandoned.
After filling the TM-12 I.e replying the TM objection raised by the trademark examiner it will take 30 to 60 days to change the status of the trademark application.
- Objection of Section 9 – Trademark is descriptive or general in Nature
- Objection of Section 11 – Similar trademarks are available in TM Database
- Incorrect TM form used
- Description in the TM-1 is not as per WIPO
To avoid Trademark Objection, one needs to select a proper trademark, do deep study and also keep the following points in mind:
- Deep research of the existing similar trademarks and thorough study of the database of trademarks.
- Use of unique, specific and not general and non-descriptive words.
- Avoiding deceptive, disparaging and offensive language.