"Cited trademark" is a term of art in trademark examination practice, referring to a prior trademark retrieved by the examiner during substantive examination that is identical with or similar to the later applied-for mark and is therefore cited as the basis for refusal. It is the core constituent element of a refusal on relative grounds under Article 30 of the Trademark Law.
Scope of Cited Trademarks
Under Articles 30 and 31, the following may serve as cited trademarks:
- Registered trademarks: registered trademarks within their validity period on the designated goods;
- Preliminarily approved trademarks: prior applications that have passed examination and are within the preliminary approval publication period or awaiting registration after publication;
- Prior pending applications: applications with an earlier filing date still under examination (under the first-to-file principle of Article 31).
Note: well-known trademarks may also affect examination in specific circumstances, but routine citation centers on prior registrations and applications.
The Role of Cited Trademarks in Refusals
For the examiner to find that "the applied trademark is identical with or similar to the cited trademark on the same or similar goods," two elements must be satisfied simultaneously:
- Similarity of the marks: similarity in sound, appearance, meaning, or overall impression such that the relevant public is likely to be confused;
- Similarity of the goods/services: judged on the basis of the Classification of Similar Goods and Services and market reality.
If either element is missing, the refusal cannot stand — these are precisely the two basic entry points for responding at review.
Analyzing the Rights Status of the Cited Trademark
Before responding to a cited trademark, its status must be clarified; different statuses call for different strategies:
| Status | Response Strategy |
|---|---|
| Registered for 3+ years, suspected non-use | File a cancellation for three consecutive years of non-use; request suspension of the review |
| Registered for less than 5 years, grounds for invalidation | File an invalidation |
| Near renewal deadline, owner unreachable | Wait for natural lapse upon expiry without renewal |
| Owner open to cooperation | Negotiate an assignment or sign a coexistence agreement |
| Stable status, highly similar marks | Focus on arguing non-similarity of marks/goods, or abandon |
Distinction from Related Concepts
- vs. prior rights: prior rights is a broader concept that also includes copyrights, name rights, enterprise trade names, etc. (Article 32); a cited trademark refers only to a prior trademark right;
- vs. defensive trademarks: a defensive trademark is a strategic registration made by the registrant itself, different in nature from another person's trademark cited in examination.
A cited trademark is not an insurmountable obstacle — its defects and status changes are often the breakthrough for a turnaround at review.
The practical judgment behind this concept must be combined with the individual case; before acting, you may book a targeted analysis with a registered trademark agent on MyTMBee.