Quote from Martin Schweiger on September 28, 2018, 10:39 am
This is special for the US.
Citation objection
To avoid citation objections, a comprehensive pre-filing search is recommended. A pre-filing search report would contain a legal opinion on the availability of the mark, more specifically:
(a) Identify any high, medium and low risk marks that could be cited against the application;
(b) Advice on ways to overcome potential cited marks; and
(c) Advice on inherent registrability of the mark in terms of descriptiveness, non-distinctiveness and other types of absolute ground objections.
A pre-filing search report therefore allows your client to have a better overview of the chances of successful prosecution of its trade mark. Should the chances of successful prosecution be low, your client may then make an informed decision to re-brand instead of pursuing the trade mark application and hence avoid dealing with citation objections and incurring hefty examination stage costs.
Specification objection
The USPTO is notorious for raising specification objections. In the US, the Examiner is strict in examining specifications and prefers specific claims as opposed to wide claims. While it is possible to review specifications in detail prior to filing to ensure their acceptability, review charges would apply.
It is recommended to file an application with broader scope of goods and/or services so that your client’s rights are maximized, and only narrow down the scope later should an objection be raised, instead of narrowing the goods and services at the outset and still facing objections from the Examiner anyway.
Where goods and/or services are broad, I would recommend filing the application as it is, and letting the Examiner make suggestions to specify the items later.
It is rare for the USPTO to immediately accept specifications as filed, based on experience. It would therefore be difficult for your client to avoid a specification objection in the US unless your client has similar prior registrations in the US and know exactly the identification of goods and/or services that have been accepted by the USPTO previously.