Respond to TM Objection

Overview:

Trademark objections are common when applying for a trademark registration. When a trademark application is objected to by the Trademark Office, it is necessary to provide a suitable response to overcome the objections. At Corporate Raasta Consulting, we offer comprehensive services to help businesses respond to trademark objections and overcome them.

Benefits:

Here are some of the key benefits of using our Respond to TM Objection service:

1. Increased chances of approval: Our team of experienced trademark attorneys will analyze the objection and provide a suitable response to increase the chances of approval.
2. Save time and effort: Responding to trademark objections can be a time-consuming and complex process. Our service can save you time and effort by handling the process on your behalf.
3. Cost-effective: Our service is cost-effective and can help you avoid the expense of re-filing your trademark application.

Checklist:

Here are some of the key steps involved in responding to a trademark objection:

1. Understand the objection: Read the objection letter carefully and understand the reasons why the trademark application has been objected to.
2. Analyze the objections: Analyze the objections raised and identify the key issues that need to be addressed in the response.
3. Develop a response strategy: Develop a response strategy that addresses each objection and provides evidence to support the application.
4. Prepare and file the response: Prepare a response letter and file it with the relevant authorities within the given time frame.

Process:

The process of responding to a trademark objection involves understanding the objection, analyzing the objections raised, developing a response strategy, preparing a response letter, and filing it with the relevant authorities. At Corporate Raasta Consulting, we provide end-to-end support for responding to trademark objections, including analyzing the objections, developing a response strategy, preparing the response letter, and filing it with the relevant authorities.

Following is the approach on how to write an objection reply:

Understand the Objections: Carefully review the objections raised by the trademark examiner and ensure a clear understanding of the reasons for the objection. Identify the specific grounds on which the objection is based, such as similarity with existing marks or lack of distinctiveness.

Provide Detailed Explanation: Clearly explain why your trademark differs from the other marks cited by the examiner. Highlight the distinctive elements of your mark, such as unique design features, wording, or combination thereof, that set it apart from the cited marks.

Describe Goods and Services: Specify the goods or services associated with your trademark and how they differ from those covered by the cited marks. Emphasize any unique characteristics or features of your goods/services that distinguish them from others in the market.

Address Specific Format Requirements: Ensure that your objection reply adheres to the specific format requirements specified by the trademark examiner or the trademark office. Follow any guidelines provided for structuring your response and organizing the information.

Provide Supporting Evidence: Include any supporting evidence or documentation that reinforces your argument and demonstrates the distinctiveness of your trademark. This may include market research, consumer surveys, sales data, or examples of actual use of the mark in commerce.

Be Concise and Clear: Keep your objection reply concise, yet comprehensive, focusing on the key points that support your argument. Use clear and precise language to communicate your points effectively to the trademark examiner.

Seek Professional Assistance if Needed: If you encounter challenges or complexities in drafting the objection reply, consider seeking assistance from a qualified trademark attorney or consultant experienced in trademark matters. They can provide valuable guidance and ensure that your response meets the necessary legal standards.

Documents:

The documents required for responding to a trademark objection may vary depending on the specific objections raised. Generally, you will need to provide evidence that addresses the objections raised and supports the application.

Legal Power of Attorney: A legal power of attorney authorizes a designated individual or entity, such as a trademark attorney or agent, to act on behalf of the trademark applicant in legal matters related to the trademark application. The power of attorney document should be duly executed and submitted along with the response to the examination report to demonstrate the authorized representation of the applicant.

Response to Examination Report: The response to the examination report is a formal document that addresses the objections raised by the Registrar of Trademarks. It should provide detailed explanations, arguments, and evidence supporting why the trademark application should be accepted despite the objections raised. The response should be structured and organized, clearly addressing each objection and providing relevant information and legal arguments to counter the objections.

Evidence of Trademark Use in Commercial Activities: Evidence of trademark use in commercial activities is crucial to demonstrate the trademark’s distinctiveness, reputation, and usage in the marketplace. This evidence may include invoices, letterheads, communications (such as emails or correspondence), visiting cards, screenshots of websites featuring the trademark, brochures, advertising materials, packaging, and any other documents or materials showcasing the trademark’s use in commerce.

The evidence should cover a sufficient period and demonstrate continuous and bona fide use of the trademark in connection with the goods or services specified in the application. These documents serve to establish the trademark’s distinctiveness, acquired reputation, and consumer recognition, thereby supporting the argument for registration.

Extension of Time to File Objection Reply

When an applicant fails to submit a reply to the examination report within the stipulated 30-day period, the application risks being declared abandoned. However, in situations where additional time is required to prepare a comprehensive response, the applicant has the option to request an extension of time.

To apply for an extension of time, the applicant can do so electronically through their trademark agent by submitting Form TM-M to the registrar. Along with the extension request, the applicant must provide a valid reason for the delay in filing the objection reply. This reason should be sufficiently justified to warrant an extension and may include factors such as unforeseen circumstances, complexity of the objections, or the need for additional information.

If the reply to the examination report is to be filed by a different trademark agent than the one initially appointed, a new Power of Attorney must be submitted along with the extension request.

Upon receiving approval for the extension of time, the applicant must proceed to draft the objection reply. The reply should address each objection raised in the examination report comprehensively and provide appropriate explanations, arguments, and supporting evidence.

It’s crucial for the applicant to adhere to the new deadline provided by the extension and ensure that the objection reply is submitted within this extended timeframe. By doing so, the applicant maintains the continuity of the trademark registration process and avoids the risk of abandonment.

Trademark Objection Status

When a trademark application is labeled as “Objected” on the Indian Trademark Registry website, it indicates that the Registrar or Examiner has raised objections in the Examination Report. These objections typically stem from Sections 9 and 11 of the Trade Marks Act.

Section 9 objections arise when the Registrar or Examiner considers the trademark to be descriptive, generic, laudatory, or indicative of the quality or nature of goods. To overcome this objection, it’s essential to demonstrate that the trademark possesses inherent distinctiveness or has acquired distinctiveness through extensive use. This may involve submitting a user affidavit and compelling evidence to establish distinctiveness.

On the other hand, Section 11 objections are raised when there is an identical or similar trademark for identical or similar goods/services already registered in the Trade Mark Registry. In such cases, the Registrar or Examiner issues a Search Report listing conflicting marks.

Upon receiving an objection, it’s mandatory to file a response within one month from the date of receiving the Examination Report. The Trade Mark Registry typically uploads the Examination Report online without specific intimation to the applicant or their agent. Hence, it’s advisable to promptly submit the response upon discovering the report online or upon receiving it directly from the Trade Mark Registry.

Failure to respond within the stipulated time frame may lead to the abandonment of the trademark application due to a lack of prosecution. Effectively addressing the objections in the response is crucial, as it determines whether the Registrar or Examiner accepts the trademark or schedules a hearing for in-person arguments. Proper representation is essential, and in many cases, objections can be overcome with a well-presented response before the Registrar.

Consequences of Non-filing of reply

Failing to file a timely reply to trademark oppositions can have significant consequences for the trademark registration process. If the reply to the examination report is not filed within 30 days of notice or by the extended time granted, the trademark application may be marked as abandoned by the trademark registry.

When an application is marked as abandoned, it means that the registration process is terminated, and the application is no longer under consideration. To proceed with obtaining trademark protection, the applicant must reapply for trademark registration.

However, reapplying for trademark registration after abandonment can be a complex process and may require legal assistance from experts in trademark law. Therefore, it’s crucial for applicants to seek legal advice promptly if they are unable to file a reply within the specified timeframe to avoid the abandonment of their trademark application.

Dealing with Objected Trademark

Dealing with an objected trademark provides an opportunity for the applicant to submit a detailed response to the objections raised by the trademark examiner. This allows the applicant to present arguments, evidence, and clarifications to address the concerns outlined in the examination report. Unlike cases of immediate rejection, where the application is dismissed without further consideration, responding to objections offers a chance for the applicant to be heard and to provide a robust defense of their trademark.

Submitting a well-prepared and comprehensive reply to the objections significantly increases the chances of the trademark application being accepted and ultimately registered. A perfect objection reply demonstrates the applicant’s understanding of the issues raised and their ability to adequately address them. By providing convincing arguments, supporting evidence, and legal justifications, the applicant can effectively overcome the objections raised by the trademark examiner.

Overall, dealing with objected trademarks allows applicants to actively engage in the registration process, present their case, and enhance the likelihood of their trademark becoming registered. It underscores the importance of thorough preparation and attention to detail in crafting a response that effectively resolves the objections and paves the way for successful trademark registration.