Receiving an adverse examination report is a standard part of the trademark application process. The examiner has set out the grounds that need to be dealt with before your application can be accepted, and there is usually more than one way to deal with them.
The most common grounds of objection are that your mark isn't sufficiently distinctive, and that your mark is too similar to an earlier-filed mark.
If you have any questions, feel free to email your report to me at warren@ipsavvy.com.au. Overcoming examination reports is one of my core trademark services and I’d be pleased to provide you with a strategy forward.
Responding to trademark examination reports and objections
"Warren got my trademark through to acceptance after IP Australia knocked it back with an objection. I run a dog training business in Melbourne and I was braced for a costly fight. Instead Warren told me straight what my options were and what he would do in my shoes, then went and did it. We got early acceptance months ahead of what I expected. He explains everything in plain English, replies quickly, and his pricing is honest. If you want your brand protected properly, please don't hesitate to contact Warren!"
- Diona Chu
Written by Warren Wong
Registered Australian and New Zealand Patent Attorney and Trade Marks Attorney.
Which objection have you received?
Section 41: not capable of distinguishing
The examiner has taken the view that your mark doesn't sufficiently distinguish your goods and services from those of others. This usually comes up where the mark describes what you sell, or where it's laudatory, geographic, or a common surname.
The reasoning behind it is that other traders have a legitimate need to use ordinary descriptive words about their own products, so those words aren't available for any one trader to monopolise. It's also the constraint worth designing around if you're still settling on a name. → Choosing a trademark
How these objections are usually addressed:
Argument that the mark isn't as descriptive as the examiner has treated it, or that the words carry a distinctive meaning in combination or in context.
Evidence of use, showing that the mark has become distinctive of your business through actual trading. This is the heavy option, and it means sales figures, advertising spend, dates of first use, and examples spanning the relevant period.
Narrowing the goods and services, where the descriptiveness only bites on part of what you've claimed
Section 44: your mark is too similar to an earlier mark
The examiner believes your mark is substantially identical or deceptively similar to to one or more earlier marks, often covering similar or closely related goods or services.
Deceptive similarity is a broader test than most people expect. It takes in how two marks sound and the impression they leave, so marks that look quite different on paper can still be held to conflict.
How it's usually addressed:
Argument that the marks aren't deceptively similar, or that the goods and services aren't similar or closely related.
Narrowing your specification to move away from the conflicting goods and services.
Consent from the owner of the earlier mark, which deals with the objection without giving up any part of your specification.
Evidence of honest concurrent use or prior continuous use of your trademark.
Challenging the earlier mark for non-use, if it isn't being used. The filing date of the cited mark can determine whether this is even available so it’s best to have this checked before attacking.
Other grounds
Sections 41 and 44 cover the large majority of reports. There are other grounds of objection but they tend to come up far less often. If your report cites something else, send it through and I'll let you know what it means and what can be done about it.
How I approach adverse examination reports
Argue where there's a case to argue. Whether a mark is descriptive, and whether two sets of goods are closely related, come down to judgement rather than calculation, which means they can be tested. A well-reasoned submission often costs less than a round of amendments, and it leaves your specification intact.
Amend where you have to. Narrowing goods and services to move away from a section 44 conflict can be the most direct route to acceptance. The judgement call is how much to give up, since a registration that no longer covers what you actually sell won't do much for you when you need it.
Be realistic about evidence of use. If the mark is genuinely descriptive and you haven't been trading long, evidence of use is unlikely to get you there. I'll say so rather than billing you to assemble a case that can't succeed. Sometimes we just need to let things go.
Pursue consent as a last resort. Reaching out to a third party trademark owner reveals your hand and might put a target on your back. We have to be extremely strategic and careful with this option, and we need to do a lot of fact finding before we decide this would be a promising option.
If you filed the application yourself
Plenty of businesses file their own trademark applications, and IP Australia provides the tools to do it.
What those tools can't do is work out how to build a section 41 argument on your particular mark, or tell you whether consent is worth chasing before you spend time on it.
If you have any questions, send through your report and I'll let you know where your application stands and what your realistic options are. If the objection is straightforward enough for you to handle yourself, I'll tell you that too.
Frequently asked questions
How long do I have to respond to a trademark examination report in Australia?
There's no fixed response deadline. Your application has to be accepted within a minimum of 15 months of the date of the first examination report. That period keeps running even while the examiner considers whatever you file, so a response filed late in the period can leave no room for a further round.
Do you assist with overseas trademark applications?
Yes, I handle applications and examination reports in Australia and New Zealand directly. For other jurisdictions I can file an international trademark application under the Madrid Protocol, or instruct overseas associates where a direct national filing is the better route. Either way, you deal with me throughout.
Does an adverse report mean my trademark was rejected?
No. It sets out the grounds that need to be dealt with before your application can be accepted. A refusal only follows if those grounds aren't overcome within the prescribed period.
What is a section 41 objection?
The examiner asserts that your mark isn't capable of distinguishing your goods and services from those of others, usually because it's descriptive, laudatory or geographic. It is often addressed by submitting evidence that the mark has enjoyed such substantial commercial usage that it has in fact become distinctive.
What is a section 44 objection?
The examiner asserts that your mark is substantially identical or deceptively similar to an earlier mark, typically covering similar or closely related goods or services. The ways through often involve argument, submitting evidence of prior or honest concurrent use, obtaining consent from the owner of the earlier mark, and applying to remove the cited mark.
What happens if my trademark application lapses?
It doesn't proceed to registration. A section 224 extension can revive a lapsed application where there are proper grounds. Failing that (and short of an appropriately drafted divisional application), you may need to file a new application, which means a new set of filing fees and losing your priority date.
Can I get an extension?
Yes, in two forms. A standard extension gives you up to six months on top of the fifteen at $100 per month, with no reasons required. Beyond that, or where the application has already lapsed, a section 224 extension can run longer, though it needs a declaration setting out valid reasons, and anything over three months is advertised for third parties to oppose.
Can I change attorneys partway through?
Yes, at any stage. This is a very straightforward process and you should not be charged for it.
Send through your report
Email your examination report to me I'll come back with a complimentary assessment: warren@ipsavvy.com.au
Of course, please don’t hesitate to book a call with me as well: