The Unpredictability of Trademarks

In most cases, an experienced Trademark Attorney or IP Lawyer who’s had a chance to perform a proper trademark search will have a good idea as to whether the Examiner will raise objections. However, it’s impossible to know for sure, and the aim of this post is to give you a sense of why it’s hard to make black and white statements on how your trademark registrations will go.

From time to time Examiners raise objections that aren’t expected. In one recent case, we called an Examiner to discuss an unexpected rejection. After conferring with a colleague, the objection was withdrawn with the Examiner admitting she might have been “a bit too harsh” in her initial assessment. Occasionally we feel certain that a trademark will be objected to, perhaps because it is too descriptive (technically: “not capable of distinguishing the applicant’s goods or services”) only for the application to go through without objection.

Not only is it hard to predict whether objections will be raised, there are a number of other factors that make it hard to predict how much work will be involved in prosecuting applications. Some objections will be more thoroughly thought through than others. Some objections are more reasonable than others, while others will be based on a stricter interpretation of the rules.

Having said this, it’s important not to get into the mindset of thinking that any particular Examiner is “against you”. Besides being complex and open to a degree of interpretation, trademark law is not a science. It involves human judgements on matters of degree and usually there’s room for reasonable people to differ in their opinions.

Unfortunately, sometimes this makes it difficult for trademark professionals to give their clients the “yes” or “no” answers, that they’re looking for. Our aim is to be as simple and direct as possible, without oversimplifying or misleading.