The Trademark Office may object to a trademark registration application for a variety of reasons.The most common reason for trademark objection is discussed in this article. Trademark Objection After a trademark application is filed, a Trademark Examiner searches for prior trademarks that are identical or similar to the one being examined.The trademark examination report is the compilation of the Trademark Examiner’s findings.
The Trademark Examiner will raise the following objection in the event that the trademark application is submitted on an incorrect form:
“For certification marks in respect of goods or services falling into a class, the form of the application should be corrected as TM-4 by filing a request on form TM-16,” the application states. “The application is made on form TM-1.”
Corrective Measure: By submitting a request for correction to the trademark application on form TM-16, the applicant can overcome this objection.
Incorrect Trademark Applicant: Name As suggested in this article, the trademark applicant’s name must be entered correctly in an application.The Trademark Examiner would object as follows if the trademark applicant’s name was incorrect:
Corrective Action: “The application appears to have been filed under the name of a partnership firm; the names of all Partners of the firm should be brought on record by filing a request form TM-16.”The candidate can conquer a protest for inaccurate brand name candidate name by mentioning to address brand name application by recording a solicitation on structure TM – 16.
Failure to Attach Trademark Form TM-48: When a Trademark Attorney or Trademark Agent files a trademark application on the applicant’s behalf, Trademark Form TM-48 must be attached.The Trademark Examiner will raise the following objection in the event that Form TM-48 is not attached or is incorrectly completed:
“A properly stamped Power of Attorney in favor of a specific agent should be filed because the application has been submitted by someone other than the applicant.”
Corrective Measure: By submitting a request to correct the trademark application on form TM -16, the applicant can overcome an objection for failure or incorrect Form TM-48 filing.
Incorrect Address on Trademark Application In the event that a trademark application does not include the applicant’s primary place of business or the applicant’s address for service in India, the following objections may be made:
“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 place of business in India,” or “The applicant’s Principal Place of Business of the applicant should be brought on record by filing a request on form TM-16.”
Corrective Measure: By submitting a request for correction to the trademark application on form TM-16, the applicant can overcome an objection based on an incorrect address.
Vague Description of Goods or Services In a trademark application, the Trademark Examiner may object in the following ways if the description of goods or services is too vague or includes a large variety of goods or services in a class:
“The description of the goods and services mentioned in relation to class xx is extremely broad and ambiguous.By submitting a request on form TM-16, you should provide specific items for which the trademark is sought to be registered.
Corrective Measure: By submitting a request for correction to the trademark application on form TM-16, the applicant can overcome an objection regarding the specification of goods or services.
Existence of the Same or Similar Trademark If earlier trademarks of a different trademark owner with the same or similar descriptions of goods or services are found on records, an objection is made as follows:
According to Section 11(1) of the Trade Marks Act of 1999, “the trademark applied for registration is not registrable because identical or similar marks in respect of identical or similar description of goods or services are there on records and there exists a likelihood of confusion on the part of the public.”
Corrective Measure: The applicant has the option of responding to the trademark examination report with supporting documentation demonstrating that the trademarks cited as conflicting marks are distinct from the applicant’s trademark.
Trademark Lacks Distinctive Character: Trademarks that aren’t able to tell one person’s goods or services apart from those of another are void of distinctive character and can be challenged on absolute grounds for trademark refusal.The trademark applicant can present evidence that the mark has acquired a distinctive character as a result of its prior use in order to overcome an objection to the trademark that is based on absolute grounds for refusal.
If the mark has the potential to deceive the public due to something inherent in the mark or in its use, such as the nature, quality, or geographical origin of the goods or services, the Trademark Examiner may raise an objection.A deceptive trademark objection can be overcome by filing Form TM-16 by the applicant to exclude goods or services from the specification.