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.