An examiner’s report response is a formal written submission that attempts to overcome the objections, requirements, or deficiencies raised by a trademark examiner against a trademark application. After a trademark application is filed, the Registrar of Trademarks assigns the application to an examiner, who reviews it for compliance with the Trademarks Act and Trademarks Regulations. If the examiner identifies any issues the examiner issues an examiner’s report. The examiner’s report response is the applicant’s opportunity to address those issues through legal argument, evidence, and amendments to the trademark application. A persuasive examiner’s report response is often the difference between a trademark application that proceeds to advertisement and one that is abandoned or refused.
Avoiding abandonment of the trademark application. An examiner’s report sets a response deadline, and failure to file an examiner’s report response by that deadline can result in the trademark application being deemed abandoned. A well-prepared examiner’s report response preserves the trademark application and the filing date that comes with it.
Overcoming confusion objections. The most common objection in an examiner’s report is confusion with a prior registered or pending mark under section 12(1)(d) of the Trademarks Act. An examiner’s report response can address confusion through legal argument and evidence.
Overcoming descriptiveness and distinctiveness objections. An examiner’s report can object that a mark is clearly descriptive, deceptively misdescriptive, primarily a name or surname, or otherwise not inherently distinctive. An examiner’s report response can address these objections through legal argument, by narrowing the goods and services, or by filing evidence of acquired distinctiveness through use.
Clarifying goods and services. An examiner’s report frequently requires the applicant to clarify or amend the statement of goods and services so it complies with the Nice classification system and CIPO’s Goods and Services Manual. An examiner’s report response can propose amendments that preserve the commercial scope of the application while addressing the examiner’s objection.
Trademarks Act, RSC 1985, c T-13. Canada’s federal trademarks legislation, which sets out the substantive grounds on which an examiner can object to a trademark application and which governs the examiner’s report response process.
Trademarks Regulations, SOR/2018-227. The federal regulations under the Trademarks Act, which set out the procedural rules for trademark applications, including deadlines for an examiner’s report response, extension of time requests, and the form of amendments.
Confusion with an existing trademark. A confusion objection is a frequent issue addressed in an examiner’s report response. Assessing confusion requires considering a number of factors including the inherent distinctiveness of the marks, the length of time the marks have been in use, the nature of the goods and services, the nature of the trade, and the degree of resemblance.
Issues with descriptiveness An examiner can object that a mark is clearly descriptive or deceptively misdescriptive of the character or quality of the goods and services, their place of origin, the conditions of their production, or the person’s employed in their production.
Lack of inherent distinctiveness. An examiner can object that the trademark lacks inherent distinctiveness because it does not function to distinguish the applicant’s goods and services from those of others.
Trademark not registrable under section 12. An examiner’s report can object that the mark is not registrable on one or more of the grounds listed in section 12 of the Trademarks Act. These include marks that are primarily merely a name or surname, marks that consist of prohibited matter under section 9, marks that are utilitarian features of the goods, and marks that fall within other statutory bars to registration.
How long do I have to file an examiner’s report response? The deadline is set out in the examiner’s report itself. Missing the deadline can result in the trademark application being deemed abandoned. Extensions of time may be available in defined circumstances under the Trademarks Regulations, but they are not guaranteed.
Can I file an examiner’s report response myself? An applicant can file an examiner’s report response on its own behalf, although most applicants work with a trademark agent for examiner’s reports.
What if the examiner issues a second examiner’s report after my response? The examiner can issue further examiner’s reports if objections remain. Each examiner’s report response is another opportunity to address outstanding issues, but the prosecution history is cumulative, and repeated unsuccessful responses can lead to a final refusal that is appealable to the Federal Court.
Can consent from a trademark owner overcome a confusion objection? Consent from the owner of a cited mark can be submitted with an examiner’s report response and is one of several tools used to address a confusion objection. Consent alone is not always sufficient — the Registrar still applies the statutory confusion test — but it can be persuasive evidence, particularly where combined with amendments to the goods and services.
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