How to Avoid Trademark Objections
Choosing a business name is as critical as running the business itself. To have a trademarked name is a great asset for the business. But the real challenge in choosing a name, logo, label or any business identification mark, is to overcome the examiner’s objection.
The primary motive of any business is to make money. The entrepreneur has to reduce his financial expenses to a minimum, while prioritizing the interest and progress of the business.
Trademarking is a mandatory expense for protecting the business identifiers. But knowingly going into technical hassles and fighting litigations are unwanted expenses and results in wastage of precious time. Luckily, this can be avoided by a little bit of information and caution.
If a trademark application is objected by an examiner or opposed by a competitor, it can drain your hard earned money and consume months or even years to clear the objection/opposition. Taking an informed risk is one thing and incurring un expected risk is another.
When we file a trademark application, it is first sent for an examination. The examiner can raise an objection if he/she feels the mark is deceiving the public at large or may create confusion to the customers.
Let’s see what all are the notable objections that may arise while applying for trademark registration and see what are the precautions to avoid the same.
1) The same/similar trade mark(s) is/are already on record of the register for the same or similar goods/services.
The mark is identical with or similar to earlier marks in respect of identical or similar description of services and because of such identity or similarity there exists a likelihood of confusion on the part of the public. This objection happens when the mark applied is phonetically, visually, verbally similar to another mark already there in the records of the trademark registry and hence it may cause confusion or may deceive the public at large.
Caution to be taken – Do a thorough search before selecting the business name, log or any mark for the business and make sure that the name selected is not verbally, visually or phonetically similar to any other marks already in the trademark register under the relevant class. How to do an effective trademark search is detailed in this video: https://www.youtube.com/watch?v=gCHLFkEYcp8&t=11s
To find the class of your trademark - https://www.youtube.com/watch?v=VpzkFBzknK4&t=78s
Even if we overcome the examiner’s objection we may face the opposition from competitors if the mark is similar to other names.
2) The Mark applied is not distinct or it is do not have a self-identity.
These are words falling under plain common language which cannot claim uniqueness. If we use terms like footprint, glass, mouse, pretty etc. as our business identifier, there is not uniqueness to it and we cannot claim any protection on such words. Even if registered we cannot claim a monopoly on those marks as it is one among the common day to day words used by the public.
3) The mark applied for carries names of places, celestial objects or seasons or the like.
It is banned to trademark the names of places, celestial bodies, seasons etc. for eg. trademark will not be granted to words like earth, kerala, Karnataka, sun, moon etc. But if some prefix and suffixes are there to make the name unique it can be trademarked, but only after proving the uniqueness.
4) The mark consists exclusively of words or indications which may serve in trade to designate the intended purpose of the goods, the quantity, quality, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service as per the commonly known language.
The best trademark is the one which do not describe the features of your product, its quality, quantity, geographical origin etc. For eg. “Apple” not into fruit trading, but into electronic goods. We cannot imagine what “Nike” stands for, but for the advertisements. Same is the case with “Puma”.
“Health Oats” for selling oats, “best cakes” for cakes, “Too Good” etc are termed as bad trademarks and has high possibility of objection and later refusal by trademark registry.
Hence consider your trademark as your valuable asset and capital investment and apply wisely and effectively so that your mark is protected at no extra cost.
