Last reviewed: 6 August 2026. Most trademark examination reports raise one of two gates: Section 9 (your mark describes the goods instead of distinguishing them) or Section 11 (someone similar got there first). Both have standard, winnable replies when the facts support you — and both are avoidable at the choosing stage. Here is the decode.
The two objections and what they mean
| Objection | Examiner’s point | Reply angles that work |
|---|---|---|
| Section 9 — absolute grounds | Mark is descriptive/laudatory/generic (“Best Quality Rice”), or common to trade | Show the mark is coined/arbitrary for the goods; or prove acquired distinctiveness through long, evidenced use |
| Section 11 — relative grounds | Earlier identical/similar marks for similar goods create confusion likelihood | Distinguish visually/phonetically/conceptually; different goods/channels; attack the cited mark’s relevance (dead, different class reality); consent/coexistence where obtainable |
Evidence that moves examiners
- Sales figures and invoices under the mark, year-wise
- Advertising spend and dated creatives/listings
- Third-party recognition: press, platform rankings, awards of the BRAND (not the firm filing this reply)
- Coexistence on the register: similar marks already living together in the class
Prevent the objection at naming time
- Coined beats descriptive: invented words start distinctive
- Search before you love the name — registry + marketplace + MCA
- Describe goods precisely; overbroad descriptions collide with more citations
After the reply
- Acceptance → publication → (possible) opposition window — a separate contest with its own rules
- Hearing where the reply alone does not persuade — attend with the evidence organised
- Refusal → review/appeal routes exist; calendar discipline decides them
Frequently asked questions
How long do I get to reply to an examination report?
A fixed window from the report (commonly one month, extendable per rules) — calendar it the day the report arrives; late replies abandon applications by default.
My mark is my own surname and it got objected. Why?
Common surnames can face distinctiveness questions; evidence of use and the overall presentation usually carries them. It is a reply to write well, not a dead end.
The cited “similar” mark is in a completely different business. Does that matter?
Very much — goods/channel differences are the heart of a Section 11 reply. The registry’s citation net is mechanical; your reply supplies the commercial reality.
Can I keep using the brand while the objection is pending?
Filing does not bar use, and continued (documented) use often strengthens the record — subject to the practical risk the cited-mark owner asserts rights. That risk deserves a case-specific read.
What is a coexistence or consent letter?
The cited owner agrees in writing to your registration/coexistence — decisive where obtainable, commercial where not free. Worth exploring when the citation is the only obstacle.
Is a hearing bad news?
It is an opportunity with a date — many marks clear at hearing on the same arguments the written reply made, better organised. Preparation, not dread, is the response.
If refused, is the brand finished?
No — review/appeal exist, and so does strategic refiling (revised mark/classes). The right road depends on why refusal came; the honest memo precedes the next fee.
Can objections be avoided entirely?
Never guaranteed — examination is human — but coined marks with clean searches draw dramatically fewer, which is why naming discipline is cheaper than prosecution.
We draft Section 9/11 replies with the evidence organised the way hearings expect, and run the mark through to the register.
Trademark ProsecutionRequest a Scope DiscussionThis article is a general educational summary as on 6 August 2026 and is not professional advice or an assurance of any approval, registration or outcome — departmental decisions rest with the authorities on each case’s facts. Requirements change; verify current rules or discuss your specific case before acting.