Trademark applications could receive office actions if the examiner deems that your application does not meet the trademark standards. Some common office actions issues are: cited mark or similar to an earlier trademark application or registration, lack of distinctiveness, and the mark is descriptive.

Below are some of the objection letters and what to do in case your application received one.

 Issue 1. Likelihood or cited mark

You will see in the letter that the trademark application was objected by the examiner because there was already a registered trademark which is similar to the trademark application which may cause confusion and could dilute the registered trademark. In order to overcome the objection, the examiner suggested what to do and what to submit.

Issue 2. Lack of distinctiveness

A trademark must be distinctive in respect of the goods or services for which it will be used. Distinctiveness means that the sign must be capable of distinguishing its goods and/or services. You will need to file/submit evidence that your brand has already established distinctiveness in Singapore for at least 5 years before the trademark application date.

Issue 3. The mark is descriptive

According to Section 7(1)(c) of the Singapore Trade Marks Act 1998, a mark is considered descriptive if it consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services. So, what do you have to do if you received an objection letter like this? As mentioned by the examiner, you need to submit evidence that your mark has already established distinctiveness of its use in Singapore. See below sample of objection letter.

Responding to objection letters or office actions are tricky and hard. It's not as easy as just submitting evidence of use. You need to submit written arguments within the given deadline, otherwise, your application will be considered as abandoned. It would be easier and more logical if you will hire us to be your representative to respond to your objection letter on your behalf as we have legal experts and have more than 10 years of experience in the intellectual property field. Contact us now and get a quote.