Trademarks are most often objected to because the mark is descriptive or generic (Section 9), or conflicts with an earlier similar mark (Section 11). Common filing mistakes include skipping the search, choosing the wrong class, vague descriptions, filing a logo instead of the word mark, and missing reply deadlines.
Section 9 objections: descriptive or generic marks
Words that directly describe quality, kind or purpose, such as Best Tea for tea, lack distinctiveness. Overcome this with evidence of acquired distinctiveness through long use, or by adding distinctive elements.
Section 11 objections: similar earlier marks
If a similar mark exists for similar goods, the examiner cites it. Replies argue differences in the marks, goods, trade channels or customers, or rely on honest concurrent use.
Filing mistakes that cost time
- No search before filing
- Wrong or too few classes
- Vague goods descriptions
- Filing only a logo when the name is the key asset
- Using R before registration
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Get expert help →How to respond effectively
- Read the cited marks and grounds carefully.
- Prepare arguments with evidence of use and differences.
- File within one month and prepare for a hearing if needed.
Frequently asked questions
Is an objection the same as a rejection?
No. An objection is the examiner's preliminary view. Most objections can be overcome with a good reply or at a hearing. Refusal happens only after the applicant is heard.
Can I register a common word as a trademark?
Yes, if it is not descriptive of your goods. Apple for computers is distinctive, while Apple for apples is descriptive. The test is the word's relationship to the goods or services.
What if someone copies my pending trademark?
You can send a legal notice and bring a passing off action based on prior use and reputation. Once registered, infringement remedies become available, including injunctions and damages.
Can I file the same mark in multiple classes?
Yes. You can file a multi-class application or separate applications for each class. Each class carries its own fee, and each can face separate objections.
What happens if I do not renew my trademark?
The registration can be removed from the register after the grace period. It can be restored within the time allowed on payment of the restoration fee; after that, the protection lapses.
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