I have applied to register my business name as a trade mark but I have received a rejection from the Trade Marks Office. Although the rejection letter explains what I can do from here I don’t really understand it. Please help!
Answer: There are a large number of reasons why an application can be rejected by the TM Office. The two most common substantive reasons are (1) because of a prior application or registration and (2) because the mark you have chosen is considered to be too descriptive of the goods or services for which you want to register.
There are a number of strategies for overcoming an objection under (1).
Depending on the circumstances it might be as easy as changing (usually narrowing) your description of the goods or services. If you have been using your trade mark since before the registration date of the earlier mark that is another way to overcome the problem.
Alternatively there may be ways to “attack” the validity of the earlier trade mark – such as removing it for non-use if it is not being used any more or even if it is not being used in the form in which it is registered — or attempting to get a letter of consent from the earlier TM owner.
If you have been knocked back because your mark is too descriptive, because it has geographical significance or is a surname – i.e. “other traders are likely to want to use it” the approach needs to shift to convincing the TM Office that they are wrong by submitting evidence of meaning, use, etc or if you have been using the TM for a long period of time you can provide evidence to that effect so you can obtain registration thanks to your “prior use” or “honest, concurrent use”.
These options can take time but if you are have your heart set on a particular trade mark or if you are already well into using it an adverse report need not be the end of your efforts to get your trade mark registered.
