Reply to trademark objection | A full Guide

 

After trademark registration online, the application goes through various checks. With this in mind, the status of the application changes at every step. When the status of the trademark application is "Marked for Exam", it is being examined by the officer. Therefore, there are chances of trademark objection. So, I am here to explain how to reply to trademark objection.

The objection can be due to various reasons. They are similar to the existing trademark, offensive to the common public. However, it can be solved by meeting the requirements.

Getting a trademark is a dream for small business owners, but sometimes people object. When there is an objection, the status displayed is "objected" in the trademark registry. It is easy to reply to trademark objection, and one has to pay the amount for the reply.

Analyzation of the objection

The first and foremost step is to analyze the objection. There are various reasons to receive an objection. Reasons for the objection are as follows:-

Filing a trademark in incorrect form

Trademarks are not just for the name, but also the logos, slogan, etc. If the person puts the application in a different form, the examiner may object. There are various forms related to the types of goods and services. One needs to apply accordingly.

Incorrect name of the applicant

The spelling of the name should be double-checked. If there is a different spelling in the document proof with respect to the one written in the application, it is objectionable. However, it can be resolved easily, but one may face an objection.

Using offensive terms

One cannot include few words which are offensive to the common public. Including religious terms is the main reason for the objection. However, misleading the customers through the fake description of the product also falls under this category. Using foul words and disrespecting words also comes under offensive terms.

Incomplete details in the application.

The applicant needs to fill in the correct and brief description for the trademark. If the person does not fill in all the details and brief, it leads to an objection. It is completely dependent on the examiner whether the details are sufficient or not.

Similarity with a trademark

This is the major issue, and it arises when the person does not complete the background research. One needs to search for the similarity of the trademark before applying for it, but if there is a similarity, the objection will be on its way. However, if there is a uniqueness and the person has it for a long time even before the other, he can claim it to be his.

Drafting a reply to trademark objection

When one gets an objection, he should consult a proper person. The person will help in drafting the proper reply to trademark objection . The main motive is to convince the panel for which one has received an objection. There is a deadline of 30 days to reply to the objection, but if the person fails to reply in the timeline, the application is terminated by the registry. If the person requires more time, it is achievable by asking the registry for a valid reason.

The steps required are as follows:-

• Firstly, log in on the website of the trademark with username and password, which one made during the time of registration.
• After logging in, one will find a section of new forms. To reply to the examination report, select MIS-R to reply to trademark objection.
• After opening the MIS-R form, one needs to type in the application number for which one has received an objection. The person may be having a lot of trademarks, so one needs to be careful about the application number.
• After proceeding with the same, you get an option to attach the reply. This reply needs to be in pdf format with the papers of power of attorney.
• After completing all the procedures of the reply, you need to select the mode of hearing. There are different modes of hearing like video call an in-house hearing.
• Now one can submit the response online with the digital signature of the attorney.

Trademark Hearing

The committee will again examine the response. If the reply to trademark objection is satisfactory and meeting all the requirements of the registry it will list in the trademark journal. If the person fails to do so, you will get one more chance to prove yourself in the other hearing. In the second hearing, one needs to be personally present before the concerned authorities. 

The main purpose is to satisfy the authority to remove the objection, but if one fails to do so the application will be rejected.

Advertisement in the trademark journal

Hope that the outcome from the hearing lands in your favour. After receiving a positive reply the mark will be accepted and will be further sent to the trademark journal. 

If the application review is negative, but the applicant wants to try once more, one has an option to re-appeal by filing a petition within the time frame of 30 days.

Registration

Once the trademark is accepted and published in the trademark journal, it is still open for scrutinization of the above. This period is about four months. If there are no oppositions under the given time frame, it will proceed further. The next step is the final registration. After the trademark registers, one receives the registration certificate, but if it objects to by someone, further proceedings take place as per the laws.

Costing

When getting a trademark, one also needs to think of the cost. The application cost is about 4500 INR plus the attorney fees. Objection hearing charges are a bit higher. They are 5000 INR, and the attorney charges are approximately 10,000 INR.

Trademarking a business is always preferable. Always try to be different from the world so that no objects. One can always find someone who is an expert in this field. It not only helps in doing the background research but also dealing with all the legalities.