Categories of Trademark Objections
There are two key types of objection which may be made against your trademark; those raised by the Registry, and those raised by third parties.
Registry objections are generally based on absolute grounds, which means that the Registry take exception to the fundamental suitability of your trademark. This may be because your mark is overly “descriptive” of the goods or services provided. If you are applying through Trademark Eagle, we will be able to advise you as to the likelihood of such objections before filing the application, and also inform you on how best to avoid them. In the case of such objections occurring, we might recommend arguing against the objection. Alternatively, if the objection relates to the wording or the specifications, then we might discuss this and suggest acceptable amendments. A Registry objection is by no means definitive, and should not be regarded as the end of the road for you mark.
This also applies to third Party objections, which are raised by those who claim that a published application conflicts with their own trade mark interests. As the formal opposition process can be arduous and expensive for all involved, such complaints are often negotiated prior to an opposition being held. In this instance it is not at all unusual for negotiations to lead to an amicable resolution. If the objector does choose to file a formal opposition to your mark however, this will initiate a process whereby both parties are required to make their case to the Registry. Even in this situation there should not be cause for alarm, as the process will often resolve in a compromise allowing for mutual coexistence.
Budgeting for Trademark Objections
Our filing process includes extended searches in order to help our clients avoid objections and oppositions, and we have a 99.1% success rate with the trademarks we file. We recommend that you additionally budget in the region of £275 plus VAT for additional professional time which may be required in dealing with queries raised by the registry.
If a third party objection is filed against a trademark application our Trademark Attorneys would briefly review the matter and ask you to authorise professional time to provide their specific advice, which would include a detailed analysis of the specific objection and other party's rights, whether these are subject to proof of their use because of their age and your options to try and amicably resolve the matter. The time our attorneys would need also includes drafting and sending a counter proposal that is relevant to the specific case. Our experience shows that often 4 hours professional time is required to provide you with the critical advice briefly set out above. We will ask you to authorise any additional work required.
Further information on trademark objections can be found in our FAQ.