Introduction

After a trademark hearing, the Registrar of Trademarks evaluates the presented arguments and evidence before reaching a decision. Understanding the possible outcomes helps applicants prepare for the next steps. This section explains the different trademark hearing outcomes and their implications.

Outcome 1: Trademark Accepted

If the Registrar is satisfied with the applicant’s arguments and documentation:

1. Trademark Published: The mark gets published in the Trademark Journal.

2. Opposition Period: Third parties have four months to oppose the registration.

3. Final Registration: If no opposition arises, the trademark proceeds to final registration.

Next Steps:

• Monitor the journal for oppositions.
• Pay the registration fee upon approval.

Outcome 2: Trademark Adjourned

The hearing may be adjourned if the Registrar requires more information or documentation:

1. Adjournment Notice: The applicant receives an official adjournment notice.

2. Submission Deadline: Additional documents or clarifications must be submitted within the given timeframe.

3. Rescheduled Hearing: A new hearing date is scheduled.

Key Tips:

• Respond promptly with complete documentation.
• Ensure legal arguments are well-prepared for the next hearing.

Outcome 3: Trademark Refused

The Registrar may refuse the trademark if the applicant fails to justify the mark’s eligibility:

1. Refusal Notice: The Registrar issues a written order explaining the refusal.

2. Grounds for Refusal: Common grounds include lack of distinctiveness, misleading nature, or conflict with existing marks.

Next Steps:

• Option 1: File an appeal before the Intellectual Property Appellate Board (IPAB).
• Option 2: Modify and refile the application with necessary changes.

Avoiding Refusal:

• Ensure the trademark is unique and non-descriptive.
• Provide substantial proof of usage.

Outcome 4: Conditional Acceptance

In some cases, the Registrar may accept the trademark with specific conditions:

1. Modified Application: The applicant may need to modify the trademark description.

2. Limitation of Goods/Services: The trademark may be accepted for specific classes only.

Next Steps:

• Accept the conditions and submit the revised application.
• Proceed with the final registration process.

Outcome 5: Opposition After Acceptance

Even after acceptance, third parties can oppose the trademark during the opposition period:

1. Opposition Notice: The opponent files Form TM-O within four months of publication.

2. Counter-Statement: The applicant must respond within two months.

Key Tips:

• Respond to the opposition with strong legal grounds.
• Provide evidence of prior use and distinctiveness.

Post-Hearing Timeline

The timeline after a trademark hearing typically follows this structure:

1. Hearing Completion: Day of the hearing.

2. Decision Issuance: 30 to 90 days.

3. Opposition Period: 4 months after publication.

4. Final Registration: If no opposition arises.

How ASK ASSOCIATES Can Help

ASK ASSOCIATES simplifies post-hearing procedures by:

1. Outcome Assessment: Analyzing the Registrar’s decision.

2. Appeal Support: Filing appeals in case of refusal.

3. Trademark Monitoring: Tracking the opposition period and final registration.

With ASK ASSOCIATES, clients can confidently navigate trademark hearing outcomes and protect their brand rights efficiently.

Conclusion

Understanding trademark hearing outcomes helps applicants take appropriate post-hearing actions. Whether it’s acceptance, conditional approval, or refusal, ASK ASSOCIATES provides expert support to ensure a smooth trademark registration process.