Defending the trademark from objections of the Trademark Office

A trademark, even before being registered, could need to be defended. It can happen when the trademark application is objected by the Trademark Office.

In this article, we present an overview of the most common objections, showing you what kind of actions you can take to defend your brand.

Provisional refusal to the registration of a trademark

The trademark application may receive objections from the Government Authority (Trademark Office) in charge of examining it, which could issue an “official action” (also known as “office action”, “objection”, or “provisional refusal”), giving you a time (variable depending on the State) to submit a reply.

It is not so rare that the government authority raises an objection to the registration of a trademark; indeed, we can say that in some States this is a rule and it involves a percentage that goes well over 50% of the trademark applications.

The grounds of the refusal to the registration of a trademark can be many and they can be very different each other. Among others, there are:

Objections on the filing list

In these cases, it is requested that the definition of one or more products and/or services indicated in the trademark application is modified, for example because it is considered “generic” or “too broad”, “vague” or “indeterminate”. The initial step of choosing the products to be protected is very delicate, above all because the national trademark offices of the various States can adopt different judgment criteria, so it is not certain that the definition of a product accepted by the Italian trademark office is also accepted by the United States Patent and Trademark Office.

How to defend yourself

Get in touch with your trusted advisor who can assist you in choosing the definitions to be proposed, so as to minimize the risks of receiving an objection.

Objections to the registration because the trademark does not satisfy the novelty requirement

Some trademark offices carry out the examination of the novelty of the trademark, as a result they can issue official actions based on the existence of earlier trademarks, identical with and/or similar to the proposed sign.

How to defend yourself

In these cases it will be important not only to file a detailed reply, but also evaluating with your trusted advisor the strategy to safeguard your rights, for example, the obtaining of a letter of consent, whether possible, or in an action against the owner of the earlier trademark.

Objection to the trademark because it is descriptive

Another reason of refusal can be connected to the descriptive character of your brand, which determines its non registrability.

How to defend yourself

In this case it might be useful to ask your trusted advisor if it is possible to claim the secondary meaning in your favour. Your IP professional will inform you about the number, quantity and quality of the evidences to be collected in order to demonstrate the acquisition of the distinctive character.

It is not possible to list in detail all the types of objections, because they are numerous and in some cases and sometimes they differ from State to State. Our suggestion is to have a trusted consultant assisting you since the moment of trademark application filing, both to minimize the risks of receiving an objection and to have an immediately operational contact person should the objection be issued.

 

In defense of the trademark, Eva Troiani law firm can offer her support in evaluating the grounds of the office action, providing you with an opinion on the chances of success in overcoming the objection and assisting you in the filing of the reply.