Getting an objection letter after filing your trade mark can feel like a setback, but most objections are fixable once you understand what the examiner is concerned about. In both Australia and the UK, examiners raise objections when the mark doesn’t meet certain legal requirements or conflicts with earlier marks.

Here is a clear, practical guide to responding effectively.

What a trade mark objection actually means

An objection doesn’t mean your application has failed. It means the examiner believes there is an issue that needs addressing before the application can move forward. These issues fall into two categories:

1. Absolute grounds 
Concerns about the mark itself. 
Common examples: 
- The mark is too descriptive 
- The words are generic 
- The mark may mislead consumers  

2. Relative grounds 
Concerns about conflicts with earlier trade marks. 

Common case examples: 
- You file “CLYDE FITNESS” for gym and personal training services.
A UKIPO search finds “CLYDE” registered by another owner for sports nutrition supplements. Even though the goods/services differ, the markets are closely related, so consumers might think they're connected.

-  New Zealand business applies to register a stylised bird logo for clothing.  IPONZ finds a similar bird-shaped logo already registered in Class 25. Even if the artwork isn’t identical, the visual similarity can be enough to cause confusion.

- You file “SOUNDLY” for audio equipment. An earlier mark “ZOUNDLY” exists in the same class. Phonetically, they are almost identical, and the examiner may consider your mark deceptively similar to the earlier mark.

How to respond step by step

Step 1: Read the letter slowly 
Identify each issue. Many applicants skim the letter and miss key points, making it harder to respond.

Step 2: Work out which type of objection it is 
Different strategies apply to distinctiveness issues versus conflicts.

Step 3: Calendar the deadline 
In Australia, you usually have up to 15 months. In the UK, the first deadline is much shorter. Missing deadlines can end the application.

Step 4: Choose the right strategy 
Your options usually include one of the following:

Option A: Argue against the objection 
Useful when the examiner has interpreted the mark too narrowly or missed important context.

Option B: Provide evidence of use 
If you’ve used the mark for years, evidence such as sales data, advertising activity or website traffic can show it has become distinctive through use.

Option C: Adjust your goods and services 
Sometimes narrowing or clarifying your specification removes the issue entirely.

Option D: Consider consent from the earlier owner 
In some cases, a simple letter of consent can resolve a conflict with an earlier mark.

Option E: Re-file with a stronger mark 
If the conflict is too strong or the name is too descriptive, re-filing may be the smarter long-term move.

Common objections and how to handle them

Objection: "Your mark is descriptive" 
You can respond by arguing the mark is suggestive rather than descriptive, or by providing evidence of use.

Objection: "Your mark conflicts with an earlier mark" 
Look at differences in spelling, sound, meaning or trade channels. Narrowing goods and/or services can also remove overlap.

Objection: "Specification wording is not acceptable" 
This is often a simple fix: replace ambiguous terms with acceptable ones.

Frequently Asked Questions

Does an objection mean my application will be refused? 
No. Many applications are accepted once the issues are resolved.

Should I always fight the objection? 
Not always. Sometimes narrowing your specification is easier and smarter.

Can I re-file instead of responding? 
Yes, but the same issues may arise again if not addressed.