Trademark Objections
What is a trademark objection?
A trademark objection is where a trademark examiner at the IP office has concerns about the registrability of your trademark application and raises an objection to registration.
You will need to respond appropriately to the objection, for example by submitting written arguments.
If the examiner is satisfied that the objections have been dealt with, your trademark application is then approved for registration.
Here is a brief outline of some of the most common objections:
1. Goods objections
The Trademark Office might object that the goods or services you have applied for are not acceptable.
However, with Trademarks Online, this kind of objection is unlikely because we use Trademark Office pre-approved goods and guarantee that your specification of goods will be compliant. If a goods objection is raised by the Trademark Office, we’ll deal with it at no cost to you.
2. Earlier trademark applications / registrations (Citations)
If someone else has already registered or applied to register the same trademark as you, or a very similar trademark, then the IP Office may raise a citation.
For example, if you apply for WHEAT-BICS for breakfast cereal, your application is likely to be blocked by the numerous existing trademark registrations for WEET-BIX that cover the same goods.
To find out in advance whether your trademark has already been registered, you need to do a search of the trademark register:
You can search the Australian online trademark database
You can contact a trademark lawyer to help you
What can you do?
There may be a number of different options available, including:
Submit a letter explaining why no one would be confused by the similar trademarks
Get a letter of consent from the owner of the cited trademark - saying that they agree to your use and registration of your own trademark
Remove some of the goods or services in your application if only some of them are likely to cause confusion
What are your chances of overcoming an objection?
Decisions about trademarks are made on a case-by-case basis at the discretion of the IP Office. The likelihood of success will depend on the extent of the objections, for example how many citations have been raised and how similar the trademarks are.
3. Distinctiveness and/or descriptiveness objection
If your trademark is descriptive of the goods and services that you want to register it for, or if it includes a word or image that other traders in your industry should not be blocked from using, then the IP Office may object.
The IP Office will object to descriptive trademarks, for example:
FRESH for fruit juices
CRISPY for chips
SOFT for clothing
FINANCIAL ADVICE for investment services
Examples of marks that are non-distinctive:
PRIME
SUPER
BEST BUY
a cross for medical services (example below)
What can you do?
Submit arguments explaining why your trademark is not descriptive or is not one that other traders would need to use in their daily business.
Remove some of the goods or services in your application, if the objection is only applicable to some of them.
What are your chances of overcoming this objection?
If the objection only applies to some of the goods and services in your application, you can overcome the objection by deleting those items from your application.It can be difficult to overcome this type of objection by argument alone, in which case you should get advice from a trademark lawyer.
4. Real names
If your trademark includes a person’s name or image, the Trademark Office will require confirmation that the person concerned consents for their name or image to be used in your trademark.
What can you do?
If the person is alive: Submit a letter of consent from the person approving your use of their name in your trademark.
If the name is an invented name: Write to the IP Office explaining that the name is an invented name.
If the person has been dead for less than 10 years: Provide a letter from the person's legal representative or estate giving consent to your registration.
If the person has been dead for more than 10 years: Submit a letter explaining that the person has been dead for over 10 years.
What are your chances of overcoming this objection?
With the relevant consent, this kind of objection is fairly easy to overcome.
5. Specification objections
At times, the Trademark Office will request clarification on the wording used in your goods/services listing. It is unlikely you’ll get this kind of objection when using Trademarks Online as our platform only allows you to include goods and services that have been pre-approved by the Trademark Office.
What can you do?
Should this situation arise, we will take care of the specification objection for you, at no charge.
