Trademark Objection

An application for registration of a trademark can be objected by the Trademark Office for a number of reasons. In this article, we look at the top reason for trademark objection.

Trademark Objection

After a trademark application is submitted, a trademark examiner looks it over and searches for earlier trademarks that are the same as or similar to the mark under consideration. The trademark examination report is a compilation of the Trademark Examiner's conclusions.

Use of Incorrect Trademark Form

The Trademark Examiner will raise the following objection if the trademark application is not submitted using the correct format.

"The application is made on form TM-1 for a certification mark in respect of goods or services falling under a class. The application form should be corrected as TM-4 by filing a request on form TM-16."

Corrective Action: The applicant can address this objection by submitting a request on form TM-16 asking for the trademark application to be corrected.

Incorrect Trademark Applicant Name

The trademark applicant name must be properly entered in an application, as advised in this article. In the case of an incorrect trademark applicant name, the Trademark Examiner would make the following objection: "The application appears to have been filed in the name of a partnership firm. By submitting a request form TM-16, the firm should enter the names of all of its Partners.

Corrective measures The applicant may overcome an objection based on an incorrect trademark applicant name by making a request on form TM-16.

Failure to File Trademark Form TM-48

Whenever a trademark agency or lawyer submits an applicant's trademark application, Trademark Form TM-48 should be affixed.The Trademark Examiner would object as follows if Form TM-48 were to be incomplete or missing:

The notification states that "A duly stamped Power of Attorney in favor of a specific agent should be filed." "Someone other than the applicant has submitted the application," it says.

Corrective Action: The applicant can overcome an objection for failure or an inappropriate Form TM-48 filing by requesting to correct the trademark application and submitting a request on form TM-16.

Incorrect Address on Trademark Application

The following objection may be made if the applicant's principal place of business or address for service in India is omitted from a trademark application: "The Principal Place of Business of the Applicant Should Be Brought on Record by Filing a Request on Form TM-16" or "The Applicant's Address for Service in India Should Be Brought on Record by Filing a Request on Form TM-16, Since the Applicant Has No Principal Pla

Corrective Action: The applicant may respond to a complaint about an erroneous address by asking to have their trademark application corrected by submitting a request on form TM-16.

Vague Specification of Goods or Services

The trademark examiner may object as follows if the description of goods or services in a trademark application is very general or encompasses a wide range of products and services in a class: "The description of goods/services mentioned in respect of class xx, is highly vague and extensive. You must be very specific about the specific items for which the trademark is sought to be registered when filing a request on form TM-16.

Corrective Action: The applicant may address a concern with the description of the products or services by submitting a request to correct the trademark application on form TM-16.

Same or Similar Trademark Exists

If older trademarks that are identical or similar but belong to a different trademark owner are discovered in records pertaining to identical or similar descriptions of products or services, the following objection is raised:

"The trademark applied for registration is not registrable under Section 11(1) of the Trade Marks Act 1999 since identical or similar marks in respect of identical or similar description of goods or services are there on records, and because of such identity or similarity of marks and goods or services, there exists a likelihood of confusion on the part of the public."

Corrective Action: The applicant can submit a reply to the trademark examination report by asserting, with proof, that the trademarks listed as competing marks in the examination report are distinct from the applicant's mark.

Trademark Lacks Distinctive Character

Trademarks that lack unique character and cannot differentiate between the goods or services of one person and those of another are subject to opposition under absolute grounds for refusal of trademarks. The applicant for the trademark may provide evidence to support the claim that the mark has developed distinctiveness as a result of earlier usage in order to override a trademark objection raised under absolute grounds for denial.

Trademark is Deceptive

The Trademark Examiner may object if the nature, quality, or geographic origin of the products or services, or another factor inherent to the mark itself or to its usage, poses a risk of misleading the public. By filing Form TM-16, the applicant can respond to a misleading trademark objection by attempting to omit certain goods or services from the specification.