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Imperturbable with Trademark Rejection, Calm Analysis Helps Winning
—Trademark Withdrawal Case of CL Company
With the same pace of “the three over-ten-million” of trade mark application in China, the rejection of trademark goes up with varied reasons. However, a rejection does not mean a dead end of a trademark. Applicants shall analyze the exact reasons of rejection before choosing the best method to deal with it.
Case Review
CL Company conducted the registration application of trademark C1 on tea products, but it was rejected by Trademark Office due to similarity of prior registered trademark C2 and C3. Meanwhile, CL Company and its agent did not request for reexamination at that time. In recent days, CL Company consults us as it is reconsidering to register the C1 trademark on its tea products.
Analysis & Strategy
Trademark C1 was rejected in the consequence of its resemblance to the prior trademark C2 and C3. With comparison among the three, we found that trademark C1 indeed resembles trademark C2 and C3, which may lead to a low success rate even we apply for reexamination. Therefore, it would be hard to register trademark C1 successfully with a second application.
Our client fancies trademark C1 and the trademark has been applied on his available products with wide promotion. For the reason of the high investment, our client is eager to obtain the exclusive right of trademark C1. In view of this, we provide analysis to client as below: first, due to the resemblance among trademark C1, C2 and C3, the re-registration of trademark C1 is in high possibility to be rejected, same to the reexamination after rejection. Second, the best way to a successful registration of trademark C1 is to withdraw trademark C2 and C3, which clears the obstacles for the registration of trademark C1 and increases the rate of success.
We do comprehensive analysis of trademark C2 and C3, and found out that the applicant of trademark C2 has changed the company name and address without change the relevant trademark registration information. Meanwhile, applicant of trademark C3 is a natural person which means the registered address may not fit the actual address. Under the above circumstances, if our client applies the withdrawal of trademark C2 and trademark C3, applicants of the above two may not receive the notice from Trademark Office because of the discrepancy between the registered and the actual address. Moreover, our preliminary research shows that trademark C2 and C3 are not seen on tea products in the market.
Based on the above analysis, we immediately suggest our client reapply trademark C1, and in the meanwhile, withdraw the trademark C2 and C3 with the reason that they haven’t been used for three years. While waiting for review of trademark C1 application, we received the decision of withdrawing Trademark C2 and Trademark C3 from Trademark Office. At this point, the obstacles are cleared. At present, trademark C1 has passed the preliminary review of Trademark Office, and has been announced to public.
Conclusion
From the above case, we hereby remind trademark applicants of the following aspects:
1. Arrange the trademark registration in advance. Trademark application period lasts for over one year. If the trademark fails in registration after it has been applied on the products for promotion, all the investment and effort will become in vain.
2. Carefully analyze the rejection reasons and apply reexamination when the trademark is rejected. Plenty of the rejected trademarks are announced by successfully passing the reexamination.
3. Change the trademark registration information if the name and address of the applicant have changed. Otherwise, the trademark will be withdrawn due to failure of receiving the documents from Trademark Office when the dispute of trademark withdrawal occurs, and the applicant will lose the trademark without awareness.
4. Save evidence about trademark usage when the trademark is registered. For instance, to highlight the trademark in daily trade contracts or bills, and keep the materials.
5. Entrust a professional agent. A professional trademark agent will analyze the case under its condition and offer the best solution.
From the above case, we hereby remind trademark applicants of the following aspects:
1. Arrange the trademark registration in advance. Trademark application period lasts for over one year. If the trademark fails in registration after it has been applied on the products for promotion, all the investment and effort will become in vain.
2. Carefully analyze the rejection reasons and apply reexamination when the trademark is rejected. Plenty of the rejected trademarks are announced by successfully passing the reexamination.
3. Change the trademark registration information if the name and address of the applicant have changed. Otherwise, the trademark will be withdrawn due to failure of receiving the documents from Trademark Office when the dispute of trademark withdrawal occurs, and the applicant will lose the trademark without awareness.
4. Save evidence about trademark usage when the trademark is registered. For instance, to highlight the trademark in daily trade contracts or bills, and keep the materials.
5. Entrust a professional agent. A professional trademark agent will analyze the case under its condition and offer the best solution.