Welcome for dipping your toes into the world of trademark! As you may expect, Trademark application process could not always be straightforward. Here we summarize a few common hiccups which could block your applications for trademarks:-
1. Official Refusal based on Absolute Grounds (Refusal on Absolute Grounds)
2. Official Refusal based on Relative Grounds (Refusal on Relative Grounds)
3. Oppositions from Third Parties (Our Three Tips for Opposition)
4. Cancellations from Third Parties
If you have the benefit of engaging an agent, letters will reach your agent first. Whenever an obstacle is encountered, your agent will report to you. A most basic report could look like this:-
Dear Sam,
We have received an official objection. Your application for trade mark “SUMMER” in class 32 is refused registration due to an earlier registration “SUMER” in class 32. If you do not agree, you can file an appeal against the decision. We look forward to hearing from you by 16 August 2060.
Best,
Lewis
ABC Trademark Agent
Should you be happy with the report? Well, neat and simple, and you now have a basic grasp on what is going on for your trademark application. We, however, believe that you deserve to know more, at least for five more matters. Details follow.
1. What did the agent say before?
Do you still have the Crystal Ball (Shall I conduct a Pre-Application Trademark Search?) in mind?
If you have engaged the agent to conduct a cursory trademark search before trademark filing. here comes the high time to examine the quality of the crystal ball.
In our case, the agent should have mentioned to you how the official action should be aligned with the pre-application search result. Did the pre-application search reveal the “SUMER” earlier registration in the first place? If yes, do they now provide a generally consistent estimated prospect in the report? If not, do they provide reasons why the earlier mark was not identified?
2. Is there any other option?
People always feel better when they have choices. On the face of reading, “filing an appeal” appears to be the only way forward suggested by the agent. But is it the case? Abandonment of the trademark application is obviously another option. In usual scenarios, there should be a few more options available, depending on the actual factual matrix involved. It is an area certainly you can push for more enlightenment.
3. What are the prospects of different options?
As discussed in (Refusal on Relative Grounds), even the best IP lawyer in this world cannot provide a definite answer on the prospect. After all, it is an art but not a science. With human discretion involved, results can never be totally consistent. Having said that, specialists can always draw assistance from past experience and the understanding of laws to provide you with a good prediction, just like how the weather forecast tells if you should bring an umbrella or not when going out tomorrow.
As to oppositions and cancellations, the results will highly hinge on the qualities of paper evidence and what the witnesses would say in the witness box (common law). Unfortunately, this would be far more unpredictable. Whether the agent could help you dig out the most relevant and useful evidence and identify the weaknesses of your case at the early stages would be the key to case management and achieving success.
4. What are the timelines involved in different options?
In some jurisdictions, oppositions and cancellations could take years to complete. Likewise, some trademark offices are not very efficient in examining trademark applications. Sad to say, however, lingering trademark issues are never good news for the development of your business. There are thousands of reasons why you need a definite answer ASAP, like, you would like to strike a business deal with a franchisee, or whether you would abandon a trademark filing campaign. Having a rough idea of the timeframe always helps you make a better commercial decision.
5. What are the costs of the varied options?
Financial resources are always bound to be limited. It goes without saying that spending your money wisely is vital to business development. A good agent will put himself/ herself into your shoes and try to help you achieve your commercial objectives within your preferred (but realistic and reasonable) budget. Cost budgeting and time budgeting are just equally important!
Dear Sam,
We regret to inform you that we have received an official objection. Your trade mark application for “SUMMER” in class 32 is refused registration due to an earlier registration “SUMER” in class 32 (“Cited Mark”).
Option A – Filing an Appeal
As you may recall, our cursory pre-application search revealed the Cited Mark, and the official refusal is therefore no surprise. We still believe that you will enjoy a better-than-average prospect to succeed with filing the appeal. You may expect a result in around 6 months. Our costs for filing an appeal would be US$1,200.00 (inclusive of disbursements and fees).
Option B – XXX
Prospect / Costs / Timeline
Option C – XXX
Prospect / Costs/ Timeline
In view of the above, we recommend that you file an appeal against the decision. If your budget allows, you may also consider adopting Option B as an additional measure to enhance the prospect.
There is a deadline of 30 August 2060 and we look forward to hearing from you by 16 August 2060.
Best,
Lewis
ABC Trademark Agent
Do you like this piece of advice more? You would In no way accept a sorry performance, and Trasomark can help squeeze the lemon to the very last drop from the agents!
As ultimate users, you should have your own says on what you look for and expect from the agents. Grateful if you could share your thoughts!
