We show you how to respond to experts

In the process of self-registration of a trademark, applicants in 60-70% of cases are faced with notifications or requests from Rospatent experts that need to be answered. Preliminary refusals frighten entrepreneurs; not everyone understands how to react to them correctly.

My name is Yuri Gorbachev. I head the Lireit patent office. I’ll tell you what to do when you receive a notification or request from Rospatent in this article.

Is provisional refusal the end?

A preliminary refusal is sent to the applicant during the formal examination. Rospatent employees check the trademark, identify inconsistencies and ask them to correct them or prove that the expert is wrong.

A provisional refusal is not the end. In 95% of cases, the correct answer helps to convince the expert and achieve trademark registration. Communicating with experts is easy if you understand what is required of you in a given situation.

Usually the department gives up to 6 months to respond. Patent attorneys can respond quickly – within 1-2 days; a self-response may take longer. We need to study the legal framework and find the necessary arguments to convince the experts. There will be no second chance. If the answer convinces the expert, the trademark will be registered.

The overall duration of the registration process depends on the speed of response to the provisional refusal. There is no point in delaying your answer.

What grounds can there be for a preliminary refusal and how should I respond to the expert?

We try to reduce all risks before submitting an application. However, it still happens that experts send notifications. No patent attorney can predict what the subjective opinion of a FIPS employee will be.

In 99% of cases, we manage to defend the client’s designation; years of practice help with this. We have analyzed and found out which grounds are most often found in notifications and are ready to tell you how to act in each specific case. However, this does not negate the fact that all situations require an individual solution.

The declared designation may mislead consumers

Experts check the designation and determine whether consumers will confuse the manufacturer, location, product and other parameters due to ambiguous interpretation of the trademark. If in doubt, they issue a provisional refusal to the applicant.

The applicant's task is to prove that the trademark does not mislead consumers. Documents that indicate distinctiveness may be presented as evidence.

Practice:

We applied to register the Megabrends trademark in class 35 of the ICGS, but received a notification from experts. Experts contrasted Mega Brands Incorporated from Canada with our trademark.

We prepared a response and pointed out that the Mega Brands Incorporated trademark is not in the registry. If company representatives want to challenge the registration, they can go to court. The trademark is registered.

There is already a similar or identical trademark in the Rospatent register

This reason is the most common in practice. That's why we offer pre-designation checks to all clients. It allows you to avoid notifications on these grounds.

During the verification process, the expert discovers that the same or very similar designation has already been registered in the specified classes of the IKGS. If no questions arise with identical trademarks, then similarity is a subjective criterion, which means there is a chance to challenge the expert’s position.

We always recommend starting with checking the copyright holder. For example, an LLC was liquidated, then the trademark is no longer protected. You can point this out to the expert.

If there are grounds, you can always cancel your competitor’s trademark. It is possible to prove that a trademark is not similar by providing a linguistic-semantic analysis of the verbal designation or a comparative analysis of logos.

Practice:

In October 2021, we were contacted by a client whose trademark had been stolen by another patent office. They submitted a similar name for registration themselves. We have been given the task of registering the trademark “nebanalno”, taking into account the existing obstacles. We applied for registration, but a preliminary refusal was issued, since the trademark was similar to the designation “NEBANAL”.

We sent a reasoned response to Rospatent, indicating that the opposing designation has fewer letters, is written in Cyrillic, differs in the composition of vowels and consonants, and does not match in stress. That is, they conducted a comparative analysis and shared the findings with department experts. The trademark is registered.

It is permissible to ask the copyright holder of the opposed mark for a letter of permission for registration.

The declared designation contains unprotected elements

When such a notification arrives, it is better to agree with the examination and ask to register the trademark. If the expert makes a positive decision, your designation will be registered, but it will contain unprotected elements. Everyone can use them.

Recent examples from our practice:

• trademark “Amur Boutique” – unprotected elements: “18+”, “BOUTIQUE”;

• trademark “Two Elements” – unprotected elements: “MARTIAL COMBAT CLUB”;

• trademark “FRESHCLEAN” – unprotected elements: “FRESHCLEAN”, “CLEANING COMPANY”.

There is a rule:

The unprotected element must not dominate the trademark.

Trademark successful registered.

In addition to the situations listed above, other grounds may be claimed. You will find the list in Art. 1483 of the Civil Code of the Russian Federation, experts of the patent office rely on it.

Remember that there is no one-size-fits-all answer to a provisional waiver. It is important to analyze the situation and choose the right tactics.

How to independently answer a Rospatent expert?

You can respond to an expert’s letter yourself, although sometimes this requires serious preparation. We have to study the regulatory framework and practice in similar situations.

We recommend proceeding step by step:

1. Carefully study the reason for the refusal and the requirements of Rospatent. This will help you better understand what needs to be corrected or supplemented. The preliminary refusal must indicate the reasons why the expert considers registration impossible. We have considered the most common reasons, but other motives may arise.

2. Prepare a written response to the preliminary refusal, detailing your arguments. Be sure to indicate what you are based on, make references to practice or regulations.

3. Attach to your response all requested or necessary documents and materials that support your arguments. In most cases, applications are not needed, but if you cannot prove your position without them, it is better to use them.

For example, your designation contains the name of a famous person, attach this person’s consent to register a trademark, then Rospatent may make a positive decision.

4. Make sure that your answer is written correctly and clearly, without errors. It is better to spend a little more time checking than to rush and lose the opportunity to register a trademark.

After you send the answer to the expert, you need to wait. Rospatent will make a decision on registration or refusal within a few months. In the latter case, you can appeal the decision to the Chamber of Patent Disputes.

Most of the risks associated with registering a trademark can be eliminated at the preparation stage:

• conduct a check against Rospatent databases;

• modify the designation if necessary;

• fill out an application taking into account the specifics of the situation or prepare arguments in advance if the possibility of receiving a preliminary refusal is high.

Preparation is an important stage when registering a trademark.

Have you encountered a preliminary refusal from Rospatent? Did you manage to defend your position?