Responding to Examiner’s Reports

“Not described in ordinary commercial terms”, “clearly descriptive”, “deceptively misdescriptive”, “confusingly similar” and “prohibited” are just some of the reasons why an examiner may choose to object to the registration of your trademark. If you receive an Examiner’s Report citing one or more of these concerns, our knowledgeable trademark agents would be pleased to assist you with preparing a response.

Concerns raised in an Examiner’s Report may be overcome by either:

1. amending the trademark application, typically to restate the goods and/or services in ordinary commercial terms; or
2. providing arguments that counter the examiner’s objection.

The typical Examiner’s Report will include a request to have certain goods and/or services redefined using “ordinary commercial terms”. Our Intellectual Property Team has a broad understanding of the Trademarks Act, Trademarks Examination Manual and the various practice notices that govern the acceptable ways in which goods and services may be described. We are able to amend your goods and services to comply with these requirements, while at the same time ensuring that the goods and services are not expanded upon, which is not permitted under the Trademarks Act.

An Examiner’s Report which raises concerns that the trademark it is clearly descriptive or deceptively misdescriptive will require knowledge of case law, the state of the registrar, and practice policies to effectively overcome the objection. Our Intellectual Property Team are members of the Intellectual Property Institute of Canada and are regularly apprised of case law that is relevant for the purposes of responding to Examiner’s Reports of this nature.

An Examiner’s Report which claims that your trademark is confusingly similar to another’s can require skilled negotiation as you may be required to seek consent from a public authority to use the trademark or you may need to provide very specific arguments, evidenced by case law and specimens of the confusingly similar trademarks, to convince the examiner that the registration of your trademark will not result in confusion in the marketplace. Our trademark agents have consistently been able to provide strong arguments to overcome examiner’s objections of this manner, resulting in a positive resolution for our clients.

If you have received an Examiner’s Report, we would be pleased to provide you with a free ½ hour consultation where we will review the objections contained therein and explain the options for a response.