BKIP Limited


How to increase the success rate of review after a trademark has been rejected Oct 2018
Registration for trademarks have become been more and more difficult. The Trademark Office rejected 48.5% of the applications in 2016. It is not surprising if applicants get rejected when registering their trademark. Then, after a trademark is rejected, how can we increase the passing rate of review?
1. Why is your trademark rejected?
Trademarks are usually rejected at the stage of substantive examination of trademark registration. According to provisions of the Trademark Law, there are two kinds of reasons for rejecting a trademark registration, namely absolute causes of trademark rejection and relative causes of trademark rejection.
1. Absolute causes of trademark rejection include violation of Articles 10, 12, 13, 16, and 32 of the Trademark Law. There is no room for negotiation. Registration and use of the trademark are prohibited.
2. Relative causes of trademark rejection include Violation of Article 11 of the Trademark Law and the like. In addition, the new Trademark Law introduces the concept of good faith: “The principle of good faith should be followed when applying for registration and use of a trademark.” (Article 7). In summary, the reasons for trademark registration can be categorized as: no distinctiveness, violation of prohibition, conflict with prior rights, similarity to prior applications.
2. How to deal with rejection of trademark registration?
If the trademark registration is rejected, the applicant may ask a professional trademark agency to submit an application for review to the Trademark Review and Adjudication Board (TRAB) of the State Administration for Industry and Commerce. The function of the Board is similar to that of an “appeal court”. It is responsible for hearing all the review applications of unsuccessful trademark registration applications. The three major reasons for rejections of trademark registrations and their respective solutions are set out as follows.
1. Rejection due to other’s prior applications
Article 29 of the Trademark Law stipulates that when there are two or more applicants applying to register a same or similar trademark for the same or similar kind of goods, the earlier application prevails. If the two trademark registrations are applied on the same day, the trademark with longer usage prevails. Is it possible to successfully register your trademark through appealing the rejection it has been rejected for being same or similar with other trademarks? The answer is yes! Your trademark may be maliciously registered by others! When your trademark is rejected because “others have registered it first” and you suspect malicious registration, you can apply to TRAB for a trademark review. The key to succeed is to prove that your trademark has been put in use and has certain influence.
2. Rejection due to similarity
The Trademark Law stipulates that if a trademark applied for registration is similar to a trademark already registered or preliminarily verified by another person on the same or similar commodity, the Trademark Office will reject the application. The most common reason for trademarks being rejected is similarity! In the face of such a rejection, we should strive to argue. Because the determination is subjective, different examiners may have different conclusions as to whether two trademarks are similar. When we apply for a review, the examiner is not from the Trademark Office, but the TRAB. They tend to consider the actual use of the trademark. If the trademark is already in use, prepare the evidence and explain your design concept to show the officials that your brand name and design are not related to other brands. You will have a great chance of success.
3. Rejection due to the lack of distinctiveness
Article 11 of the Trademark Law stipulates that a trademark that violates the following prohibitions cannot be registered! (1) Only the common name, graph and model of the commodity are provided; (2) Only indicating the quality, main raw materials, functions, uses, weight, quantity and other characteristics of the goods; (3) Lack of distinctive features. Trademarks that are rejected for lack of distinctiveness are not uncommon! When the applied trademark is too simple, such as the use of simple lines and ordinary graphics, the examiner will reject the trademark for the lack of distinctive features and not being recognizable. In this case, we can apply for trademark protection by providing evidence that the trademark has been used for a long time and it is distinctive. When the examiner rejects the application for trademark registration because of the lack of distinctive features of the trademark, the applicant may apply for review by proving that the application for the trademark is significant. The distinctiveness of a trademark is not absolute. Whether a trademark has distinctive features depends to a large extent on situations of actual use! When our trademarks are rejected, we must promptly apply for review with skills. After understanding the reasons for rejection, we should fight for our trademarks by taking respective actions with reasonable and effective evidence.