Back to Office actions

On what grounds can an IPO raise an office action?

Written by Tomas Orsula

Senior Trademark Attorney

When examining your trademark application, an IP office can raise an office action on the following grounds:

Formal/administrative errors: when there are errors in the applicant’s details, missing information, insufficient fees, or failure to meet representation requirements.
Distinctiveness: when the mark is considered too generic, descriptive, or lacking in inherent distinctiveness because it consists of wording that is commonly associated with the industry rather than the brand itself.
Likelihood of confusion: when the mark is confusingly similar to an earlier registration or pending application in the same or related classes.
Descriptiveness: the mark merely describes a characteristic of the goods or services rather than identifying a commercial source.
Prohibited elements: the mark includes national flags, official emblems, or other protected signs.
Specimen issues (US): the specimen submitted does not demonstrate genuine use in US commerce.
Goods and services description: the terminology used is not recognized or is too vague for the IP office's standards.

Related questions

Healthy competition or monopoly over Oats? The case of Oatly AB vs Glebe Farm Foods

Cases of multinational companies putting claims against much smaller businesses are far from uncommon, but their result is almost always the same - an absolute PR nightmare for the corporate giants. Oatly AB, a leading plant-based dairy alternatives producer, is amongst the companies that have fallen under public scrutiny after their overly aggressive trademark enforcement actions.

When should I register my trademark?

Timing is everything, and this is especially true when it comes to trademark registration. Choosing to trademark your brand at the right time is much more important than you would think.

12 good reasons for food & drink retailers to register a trademark

There is a myriad of reasons why trademark registration is of a crucial importance for the creators of gastronomic experiences. This article presents a concise summary of 12 key reasons why every food & drink retailer should think about registering for a trademark.