Reply to Trademark Objection

Description

Top Reasons for Trademark Objection

The following are the top reasons for trademark objection:

Use of Incorrect Trademark Form

In case the trademark application is not made on the proper form, an objection as following is raised by the Trademark Examiner.

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

Corrective Action: The applicant can overcome this objection by requesting to correct trademark application by filing a request on form TM -16.

Incorrect Trademark Applicant Name

The trademark applicant name must be entered properly in an application, as suggested in this article. In case of incorrect trademark applicant name, the Trademark Examiner would raise an objection as follows:

“The application appears to have been filed in the name of a partnership firm, names of all Partners of the firm should be brought on record by filing a request form TM-16.”

Corrective Action: The applicant can overcome an objection for incorrect trademark applicant name by requesting to correct trademark application by filing a request on form TM -16.

Failure to File Trademark Form TM-48

Whenever a trademark application is filed by a Trademark Attorney or Trademark Agent on behalf of the applicant, Trademark Form TM-48 must be attached. In case of Form TM-48 is not attached or incorrectly executed, the Trademark Examiner would raise and objection as following:

“The application has been submitted by a person other than the applicant, a duly stamped Power of Attorney in favour of a particular agent should be filed.”

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

Incorrect Address on Trademark Application

In case a trademark application has not mentioned the principal place of business of the applicant, or if the applicant’s address for service in India is not mentioned, then an objection can be raised as under:

“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 place of business in India.”

Corrective Action: The applicant can overcome an objection for incorrect address by requesting to correct trademark application by filing a request on form TM -16.

Vague Specification of Goods or Services

In a trademark application, if the specification of goods or services is too vague or encompasses a large variety of goods and services in a class, then an objection can be raised by the Trademark Examiner as follows:

“The specification of goods/services mentioned in respect of class xx, is very vague and wide. You should provide exact items in respect of which the trademark is sought to be registered, by filing a request on form TM-16.”

Corrective Action: The applicant can overcome an objection on the specification of goods or services by requesting to correct trademark application by filing a request on form TM -16.

Same or Similar Trademark Exists

In case, same or similar earlier trademarks of different trademark owner are found on records in respect of the same or similar description of goods or services; then an objection is raised as follows:

“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 stating that trademarks cited as conflicting marks in the examination report are different than the applicant’s trademark, along with supporting evidence.

 

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