Trademark Application Refused? 4 Ways To Keep It Moving

Trademark Application Refused? 4 Ways To Keep It Moving

Here is how to respond when your trademark application has been refused.

Trademarks are protected by intellectual property rights, meaning the registration of your trademark is the primary step to protecting the most important assets of your brand. Trademark registration allows for building consumer trust, brand and commercial value in the business market. But what if the first step to protecting your IP is halted by an Office Action, or quite simply when your trademark application is refused? We discuss four possible actions you can take upon refusal.

File An Appeal For Your Trademark

The first step to overcome a refusal is to appeal to the intellectual property governing body responsible for the outcome of your application, here in Malaysia known as MyIPO. An appeal will allow the examining board to take a closer look at your initial application. Under these circumstances, a previous decision can be reversed to the favour of the applicant.

You must submit your appeal within two months of receiving the notification of refusal by the Registrar via a written submission. There will be a fee incurred for submitting an appeal. Prior to submitting your written submission, it is advisable to discuss with a trademark attorney as to why your initial application has been refused, and to ensure your appeal abides by all the necessary rules to ensure a streamlined appeal process and of course, a successful outcome.

Conduct A Trademark Search On Registered and Conflicting Trademarks

You are advised to conduct an extensive search on currently registered marks of which are in conflict with yours. Seek help via a trademark agent who will be able to determine if the registered marks in contention with yours are properly maintained. Should the owner of the registered marks fail to renew their marks in a timely manner, they will consequently lose the right to their marks. This is advantageous to your situation as you will be able to register your mark without objection as the previously registered mark will be voided under these circumstances.

File A New Trademark Application

You may file a new trademark application to overcome the refusal of your initial application. Your trademark agent will provide detailed solutions to amending and modifying your trademark to a sufficient degree primed for a favourable outcome for your second trademark application. For example, you may have to switch up the design of your trademark, or make slight changes to the name of your brand, such as subtraction or rearrangement of words and phrases from your original name. Take note: you must first file for a withdrawal or abandonment for your original application with the appropriate governing body.

Continue Trademark Use, Without Registration

Whilst it is possible to accept the refusal and move on without registering your mark, do consider the reasons for which you chose to register your marks in the first place. Without trademark registration, your intellectual property will not be protected by law and you will have no legal rights to your IP. Continuing without registration is very risky, as there will always be the potential of infringement going both ways. A third party may benefit from your assets by stealing your ideas, or you may be infringing upon someone else’s trademark without knowing, or in fact, knowingly as your trademark has been previously refused. Should you want to avoid the time, effort and cost involved in legal disputes, consider speaking to a trademark agent as to how to move forward in your trademark application.

Quality Oracle are proud of our 29 years of professional experience in all areas Intellectual Property. Our group of IP experts are ready to assist you in registering, protecting and defending your most valuable assets. Get in touch for a free consultation today.

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