Trademark Objection & Opposition

Two different hurdles

Applicants often confuse objection and opposition. An objection comes from the Registry's examiner; an opposition comes from a third party after publication. Both can be overcome with the right strategy.

Objections: absolute vs relative grounds

An examination report may raise absolute grounds (mark is descriptive, generic or deceptive) or relative grounds (conflict with an earlier mark). You file a written reply to the examination report, arguing distinctiveness, prior use, or honest concurrent use, and may attend a hearing.

Opposition proceedings

After journal publication, any person may file Form TM-O opposing the mark within four months. This triggers a quasi-judicial process: counter-statement, evidence by both sides, and a hearing before the Registrar. Many oppositions settle through coexistence agreements.

Strategy matters

Strong evidence of prior and continuous use is the most persuasive answer to both objections and oppositions. Maintaining dated records of use — invoices, advertisements, packaging — pays off when your mark is challenged.