Responding to trade mark examination reports
Specialised trade mark attorneys, offering tailored, commercially oriented services related to trade mark registration, confirmation and defence.
An examination report is not a refusal. It sets out the examiner’s objections, and you have 15 months from the first report to get the application accepted. Extensions are available in some cases.
How you respond matters. Objections can often be overcome with argument, evidence of use, an amended specification or consent from the owner of an earlier mark. The wrong response, however, can waste time or narrow your protection more than it needs to. A trade marks attorney will assess the objection and recommend the most direct path to acceptance.
What is a trade mark examination report?
Every trade mark application is required to undergo several checks and meet stringent approval criteria before it can be accepted and then registered.
One of these checks involves an assessment that is performed by IP Australia’s trade mark office. This assessment reviews your trade mark against all the necessary requirements as outlined in trade mark legislation.
Where concerns are raised and a trade mark is not seen to meet these requirements, an examination report is prepared and sent to the applicant for review.
Why have I received an examination report for my trade mark?
If you have received an examination report following your trade mark application this indicates that there is a problem with your trade mark.
Also known as an adverse examination report, this document will detail the reasons why your trade mark did not meet legislative requirements and sometimes suggestions for how to overcome these.
Trade mark examiners are not allowed to provide advice so any suggestions may be limited and should not be followed without careful consideration and independent advice.
To avoid receiving an examination report, it is advisable to work with a trade mark attorney who will review your application in line with these requirements before filing.
Should I respond to a trade mark examination report directly?
While it is important to reply to an examination report within the provided time frame, it is not recommended to do so without professional guidance.
If you prepared and submitted your trade mark yourself and initially missed these legislative conflicts, you’re not alone, it is easy to do if you are unfamiliar with this process.
Additionally, without experience in this area, it is easy to make further mistakes, leave out crucial evidence or fail to adequately overcome objections.
This could see your application rejected entirely, leaving you without protection and requiring you to start the process over again at your expense. To avoid further complications and stress, the best step is to engage a trade mark attorney.
How a trade mark attorney can help
Able to expertly interpret examination reports and determine acceptable solutions, a trade mark attorney is best positioned to get your trade mark application back on track and approved.
They will assess your trade mark in line with the provided report and clearly explain where the issues lie before guiding you through resolutions.
Where there are disagreements with a given reason, such as your trade mark being too similar to an existing one, an attorney can support you to argue that the trade mark is still able to be accepted.
If applicable, they can help you prove that you have been using it for longer or that other circumstances apply that would allow your trade mark to be accepted by IP Australia.
Highly skilled and understanding trade mark law in depth, a trade mark attorney will ensure your examination report is responded to properly, on time and with the desired level of protection maintained.
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Our process
We guide you through every stage of the trade mark process, from initial assessment to granted protection.
01
Submit an enquiry & book a free consultation
Begin by submitting an enquiry and scheduling a free, no-obligation consultation. This can be conducted in-person, online, or over the phone, whichever suits you best.
02
Receive tailored IP protection recommendations & quote
Following your consultation, IP Guardian will assess your situation and prepare clear, customised recommendations outlining the most suitable IP protection pathways for your idea, brand, or invention. You will receive a detailed quote and guidance on next steps.
03
Engage IP Guardian & secure your IP
Once you are ready to proceed, simply engage IP Guardian by completing our client onboarding. Our team will then prepare and file all necessary applications on your behalf. From this point forward, your intellectual property is on the pathway to full legal protection.
Meet our skilled trade mark attorneys
Engaging a professional trade mark attorney firm, such as IP Guardian, eliminates several of the challenges posed by applying for a trade mark directly.
Successfully supporting clients to protect their IP through the successful registration of trade marks, we offer service and advice unmatched elsewhere. While we offer support with initial trade mark registrations, should you have done this directly and require help due to receiving an examination report, we’ll gladly step in.
Working closely with you, we’ll find the ideal solution that meets the expectations of IP Australia while still meeting your needs. This dedicated, professional approach enables a faster response to examination reports for resumption of processing and confirmation of registration.
Ensuring your brand is adequately protected and without delay is what we do best. Focused on making qualified legal advice both accessible and affordable to Australian businesses, we guarantee to pursue optimal outcomes with zero compromise.
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Matthew Howe
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Client testimonials
We’re proud to work alongside clients who trust us not just with their IP, but with their vision. Here are a few examples of how our IP attorneys have helped brands, inventors, and entrepreneurs secure and enforce their intellectual property rights.
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