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An email arrives from a trademark office, or another company has filed an opposition against your application. The first reaction is usually the same: have I lost the mark?
Not necessarily. An objection, an office action, an opposition or a refusal does not mean the mark cannot be registered. It does mean you have to pay attention, and the first step is not to argue. It is not to change the brand, and it is certainly not to ignore the letter because you think the other side is wrong. The first step is to understand what you have received, why it was sent and when you have to answer.
Do not ignore it, and find the deadline first
An official notice can carry a strict deadline. If you miss it, the application can be abandoned, the case can go ahead without your reply, or you can lose the chance to put your arguments.
Deadlines differ. The USPTO generally gives three months to answer an office action, with an optional extension of three months for a fee in many cases. A US application filed through the Madrid System has six months and no extension. In the EU, an opposition follows its own timetable and the notice states the dates for your case. Other offices use other periods.
So before you decide what to say, find out when you must say it. Do not assume the date on the email is the deadline. The period may run from the date of the notice, the date it was sent, the date you received it or a date the document names. Write the deadline down, and set your own earlier one.
What kind of document is it?
The word "objection" covers several different situations.
An office action, or an examination objection. The examiner has found a legal or formal problem with the application: a conflict with an earlier mark, a name that is too descriptive, a classification or wording problem, missing evidence.
An opposition. Another party asks the office to refuse your application, usually because of an earlier right. It is a dispute between parties, not just an examiner's view.
A provisional refusal. In an international registration under the Madrid System, a country you named has found a reason to refuse protection in its territory. Time limits for answering vary between countries.
A formal deficiency. The mark is not the problem. Something has to be corrected: a missing document, wrong details, an unclear list of goods.
These are handled differently. Find out who sent it and what it is before you do anything else.
Read all of it
Do not stop at the first paragraph. Look for the grounds and the law cited, the earlier marks mentioned, the goods and services compared, any required amendments, the instructions for replying and any right to ask for review or to appeal. Offices often give their reasons and the evidence behind them. You cannot answer well until you understand them.
Separate the problems
A single notice can hold several objections. Say it raises three points: a likelihood of confusion with an earlier mark, an unclear list of goods and a specimen that does not meet the requirement. A reply that only argues about similarity leaves the other two open. Make a short table: what the office says, what it relies on, and what you could do about it. A frightening letter becomes a list of separate tasks.
If the objection is about similarity
Look at both marks and at the goods. Similarity can come from appearance, sound, meaning or overall impression, and the relatedness of the goods matters as much as the names. The same name for accounting software and for clothing is not the same case as the same name for two kinds of software. See what "similar" means.
Do not compare the marks as a designer would, side by side, asking whether you can tell the logos apart. The question is what impression customers keep and whether it could lead them to think the businesses are connected.
Then look closely at the earlier mark that is cited. Find it in the official register and check:
- the exact wording or logo, the owner and the territory
- the dates, the classes and the goods and services
- whether it is still in force, or has expired, been cancelled or limited
- whether it is being challenged
The record often differs from your first impression. In some proceedings the owner of an earlier mark can also be asked to show that it has been used, which is another reason to look at its history.
Things not to do
Do not write to the other side in anger. Once a formal proceeding exists, a careless remark can cause problems. First learn what is claimed and which rights are relied on.
Do not redesign everything at once. The objection may cover only some goods, one cited mark, or a point that can be fixed by an amendment. Understand the legal position before you change a website, packaging or a domain.
Do not assume the application can be rewritten. Offices limit what can be changed after filing. Clarifying or narrowing the goods and services is often possible. Changing the mark itself generally is not.
Your options
Depending on the notice, you may answer with arguments, narrow the list of goods and services, supply evidence, correct the formal point, negotiate with the opponent or, when a refusal is final, ask for review or appeal, subject to deadlines. In the United States, for example, a final office action can be followed by a request for reconsideration or an appeal to the Trademark Trial and Appeal Board.
A good reply explains why the objection should not stop registration. "We disagree" is not enough. Evidence usually carries more weight than opinion, and it should be focused. Answer the points raised and leave out company history that has nothing to do with them.
Sometimes the objection is right. The description may be too broad, the name may be clearly descriptive for the goods, or the cited mark may be a real obstacle. Then the sensible answer may be to amend, to narrow, to agree terms with the other owner, or to file a different mark. Where parties agree to coexist, whether an office accepts that depends on the country, so it is not a guaranteed way through.
The first 24 hours
- Save the notice and the email with its attachments.
- Note who sent it and what kind of document it is.
- Identify the application: number, mark, country, classes.
- Write down the deadline and set an earlier internal one.
- Read the grounds and list each separate issue.
- Look up the cited marks in the official register.
- Gather the original application and your evidence.
- Hold off on emotional decisions, such as dropping the brand or contacting the other side.
- Decide whether you want help with the reply.
It also helps to keep one file for the matter, so that the notice, the application, the cited marks, the evidence, the drafts and the dates are in one place.
Frequently asked questions
Does an objection mean my trademark is rejected?
No. It can often be answered, amended, negotiated or appealed. The outcome depends on the country and the grounds.
How long do I have to reply?
It depends on the office and the type of notice. Follow the date in the official document.
What is the difference between an office action and an opposition?
An office action comes from the office or examiner. An opposition is brought by another party who objects to your registration.
What happens if I miss the deadline?
The result depends on the country. In the United States, failing to answer an office action in time can mean the application is treated as abandoned.
Should I change my brand straight away?
Not before you know the grounds, the scope of the issue and your options.
Can I answer myself?
Simple corrections are sometimes straightforward. A refusal based on an earlier mark, or an opposition, often needs a careful reply, so help can be worth having.
How we can help
If a notice arrives for an application we filed, we explain what it says and what your options are. A reply or an opposition response is extra work, so we send you a separate quote in writing before we start; see charged only if it happens. Our page on why offices refuse gives the background, and the glossary explains the terms. If it turns into a contested case, for example an opposition that has to be fought or a refusal that you want to appeal, we can arrange one of our partners in that country to take it on; see trademark disputes. If you want to reduce the chance of a notice in the first place, start with a search.
This article is general information and is not legal advice. Rules differ between countries and change over time; check the official source for your case.