Replying To Trademark Examination Report

Once a trademark registration application is submitted and examined by a Trademark Officer, a trademark examination report is sent to the trademark applicant or person authorised by the trademark applicant. The trademark examination report is also put up on the trademark office website along with details of the trademark application. The applicant or the authorised agent then has a chance to submit a reply to trademark examination report with rebuttal, if there is an objection by the trademark examiner. The response is then considered and if the objections can be waived on the basis of the applicant’s response, the trademark application is accepted for registration and the trademark is published in the trademark journal. In this article, we look at ways of Replying To Trademark Examination Report.

How to Reply to Trademark Examination Report

The response to an objection in a trademark examination report can be submitted by the trademark applicant or an agent authorized by the trademark applicant as the "Reply to Examination Report". The response can be submitted by sending a scanned copy (colour pdf file format) of the reply to examination report or could be uploaded online through the trademark office website or could also be submitted by person or post. Any affidavit and supporting documents should also be submitted along with the Reply to Examination Report.

Objections as to Formality Requirement

In case of objections as to formality requirement(s), the trademark applicant should comply the requirements as desired by the office. For example, if the trademark office has called for consent of a person whose portrait appears on the trademark, the trademark applicant may submit the consent from the person in writing with supporting documents or state that portrait appearing on the trademark is not of a particular person, but is a general picture of a man or woman.

Objection as to Wrong Classification of Trademark Class

In case of objection due to the goods or services mentioned in the application do not fall in the correct trademark class, the trademark applicant may file a request for correcting the class or state that as per classification of goods or services published by the Registrar, goods or services have been rightly classified.

In case of objection to the effect that some goods or services mentioned in the application do not fall in the class, the applicant may file a request for amendment of the application by deleting items that do not fall in the relevant class. The applicant can also state that as per classification of goods or services published by the Registrar, all items fall in the class mentioned in the application.

It is important to get proper legal advice as to the correct classification of goods and service, prior to submitting a Reply to Examination Report for objection as to wrong classification of trademark class.

Objection as to Trademark Lacks Distinctiveness

In case of objections as to non distinctiveness of the trademark, the applicant can submit a reply to examination report establishing that the trademark applied for registration is capable of distinguishing the applicant’s goods or services; or the trademark has acquired a distinctive character in view of its extensive use in relation to relevant goods or services, before the date of application. If the trademark has acquired distinctiveness by virtue of its extensive use, the applicant should file an affidavit as evidence of use of the trademark along with supporting documents.

Objection as to Identical or Similar Trademark Exists

In case of objections on relative grounds of refusal because of identical or similar trademarks in respect of similar goods or services, existing on records, the applicant may submit in the reply to examination report that trademarks cited as conflicting marks in the examination report are different than the applicant’s trademark, along with supporting evidence. In addition, the applicant can also produce consent or no objection from the proprietor of marks cited as conflicting in the examination report.

For more information about Replying To Trademark Examination Report, you can contact a trademark attorney through IndiaFilings or Nearest.Expert.

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Frequently Asked Questions

Common questions about Trademark Examination Report Reply.

You can submit a reply to a trademark examination report by sending a scanned copy (color PDF file format) of the reply to the examination report. Alternatively, you can upload the reply online through the trademark office website or submit it in person or by post. Any affidavit and supporting documents should also be submitted along with the reply.

If there are objections regarding formality requirements, you should comply with the requirements as desired by the office. For example, if the office requires consent from a person whose portrait appears on the trademark, you can submit the written consent along with supporting documents, or state that the portrait is a general picture and not of a specific person.

If there is an objection regarding the classification of goods or services, you can file a request for correcting the class or state that the goods or services have been rightly classified according to the classification published by the Registrar. If some items do not fall in the relevant class, you can request an amendment to delete those items or provide justification for their inclusion in the class mentioned.

In case of objections regarding the lack of distinctiveness of your trademark, you can submit a reply establishing that the trademark is capable of distinguishing your goods or services or that it has acquired distinctive character through extensive use before the date of application. If the trademark has acquired distinctiveness through use, you should file an affidavit as evidence of its use, along with supporting documents.

If the trademark office objects due to the existence of identical or similar trademarks on record for similar goods or services, you can submit a reply stating that the cited conflicting marks are different from your trademark, along with supporting evidence. Additionally, you can produce consent or a no-objection certificate from the proprietor of the cited conflicting marks.

While it is not mandatory to hire a trademark attorney, it is advisable to seek proper legal advice, especially for objections related to the correct classification of goods and services or if the trademark office raises objections regarding the distinctiveness or similarity of your trademark with existing marks.

The reply to a trademark examination report should be submitted in a color PDF file format, either by sending a scanned copy or uploading it online through the trademark office website. Any supporting documents or affidavits should also be submitted along with the reply.

The trademark examination report should specify the deadline for submitting a reply. It is essential to respond within the given time frame to avoid abandonment of your trademark application.

If you require more time to prepare and submit the reply to a trademark examination report, you can request an extension from the trademark office, provided you have a valid reason for the delay.

If you fail to submit a satisfactory reply addressing the objections raised in the trademark examination report, your trademark application may be refused or abandoned by the trademark office.