- Most refusals are visible before the application is filed.
- A mark goes through two examinations: formal and substantive. Applications usually fail at the second.
- Checking the name in advance costs nothing. A refusal costs the fee and time.
Registering a trademark looks simple until a refusal arrives. And with it go the money paid in fees and several months of time.
Here are the five most common reasons for refusal.
How examination works
A mark goes through two examinations. The formal one checks whether the documents are in order. The substantive one decides the main thing: whether the name can be a trademark at all and whether it resembles marks already registered.
It's at the substantive stage that most self-filed applications fail. People find out about the refusal after they've already paid the fee.
1. The name simply describes the product
“Fresh Bread” for a bakery, “Fast Delivery” for couriers. A name like that doesn't distinguish you from competitors, so the law doesn't let one business own it.
Solution: a name with a distinctive element that not everyone in your field would use.
2. A similar mark is already registered
It doesn't have to be identical. It's enough that a consumer could confuse your mark with an existing one for the same or similar goods.
Solution: check the databases before filing. I explained how to do it yourself in the article how to check a name in 3 steps.
3. A mistake with the classes
All goods and services are divided into 45 classes. A mark is registered in specific classes, and the protection applies in those. Pick the wrong classes, and the mark protects something other than what you do. Pick too broadly, and the chance of a conflict with other marks goes up.
Solution: a list of goods and services for your real business, with room for the next few years.
4. The name is misleading
If a name promises something the product doesn't have (for example, being natural or of a certain origin), the examiners may refuse it.
5. Errors in the application itself
The applicant stated incorrectly, a list of goods worded so the examiners can't accept it, a mismatch in the image. Small things that cost months.
What to do about it
Most of this is visible before filing, if you check the name in advance and leave the paperwork to someone who has filed dozens of applications.
An examination decision of “mark approved” means only the certificate is left to collect. Not everyone gets that far, and the main work is done before filing.
How I take a mark from the check to the certificate: trademark registration in Ukraine.
Frequently asked questions
What if I've already received a refusal?
First read the grounds. A provisional refusal can be answered with arguments, the list of goods can be narrowed, or the decision can be appealed.
How long does registration take?
On average about a year and a half. But protection counts from the filing date.
Can a descriptive name be registered if I add a logo?
Sometimes graphics help pass examination. But then it's the combination that's protected, and if you change the logo the protection may not work.
This article is general in nature and is not legal advice. Every situation has its own nuances.
