What is a Trademark Objection?

Introduction

A trademark objection is a notice from the USPTO that your trademark application has been rejected. An objection can be issued before an application has been approved, and it means that the trademark examiner believes there are grounds for denying your application. Trademark examination is handled by individual examiners who work for the USPTO; as such, you may receive different objections from different examiners at different times. Each time an examiner issues an objection, he or she will also provide guidance on how to respond in order to resolve any issues with your registration application.

An Objection is Different from an Office Action

Opposition is not a final decision. An opposition can be resolved with a written response, and it does not have to be decided by the Trademark Trial and Appeal Board (TTAB). The TTAB will decide on an opposition based on the written responses from both parties.

If there’s no settlement, then an oral hearing will be scheduled before a panel of three judges at the TTAB.

If you want to keep your trademark registration active, you must respond to all office actions and oppositions within six months of receiving them.

Objections are Explained more fully in the Trademark Manual

The USPTO’s trademark manual is a good resource for understanding the rules of the trademark process. The manual explains how to respond to an objection, as well as other things that may arise during your application. It’s available online and you can also request a hardcopy version through the mail by sending an e-mail request to TMINQUIRIES@USPTO.GOV.

The objection will be listed on your serial number’s USPTO record

The Trademark Office will publish the objection, your response, and any subsequent responses in their official records. Your response will then be published in a periodical called the Official Gazette.

The following table lists all of the available information on a trademark registration record:

respond to your objection within the deadline

It’s important to respond to your objection within the deadline. If you don’t, then your trademark application may be abandoned, refused, or even canceled by the Trademark Office.

Your response to an objection must be in writing

Your response to an objection must be in writing. You cannot respond to a trademark objection via phone, email, fax, social media message, or text. Your response can only be done by mail or courier service (this includes FedEx and UPS). The Trademark Office requires that you include a copy of your original application along with all relevant documents and arguments supporting your position.

The Trademark Office will decide whether they agree with the examiner’s determination after reviewing your written submission.

Ask for Help from the Trademark Assistance Center

If you can’t resolve your issue with an attorney, you can ask for help from the Trademark Assistance Center as a last resort. They will help you with the process of filing and registering your trademark, but they cannot assist with the substance of your case. If you are still having trouble resolving your issue, you can ask for help from a trademark attorney.

File an Abandonment Request

A trademark examination is not final until you allow it to be by abandoning it or acquiescing to the examiner.

Abandoning a trademark application is done by filing an abandonment request. Once the abandonment request has been approved, your application will be deemed abandoned and you will no longer be able to use the word in commerce.

The United States Patent and Trademark Office (USPTO) does not automatically abandon trademarks for non-use or failure to file maintenance fees. Instead, it considers each case individually and may allow for an extension of time to respond to its notice of allowance before finally abandoning a mark. If you do nothing after receiving this notice of allowance from the USPTO, they will eventually send out another extension request that must be responded to within six months if you wish to keep your mark alive.

Conclusion

The trademark examination is not final unless you allow it to be by abandoning it or acquiescing to the examiner. When you receive an objection, treat it as a warning that your application may be rejected. You can respond to an objection in writing, and if needed consult with an attorney who specializes in trademark law.