A cited trademark is the prior trademark that a trademark examiner identifies during the examination of your application and cites as the basis for refusal — including registered trademarks and prior applications published after preliminary approval. The examiner refuses your application under Article 30 of the Trademark Law only when your mark constitutes a similar trademark on identical or similar goods to the cited trademark.
What a Cited Trademark Looks Like in a Refusal Notice
The refusal notice will list the following details of the cited trademark:
- Registration number or application number;
- Representation of the trademark;
- Approved goods or services;
- Name of the rights holder and the status of the right.
A single refusal notice may cite one or more cited trademarks; where there are multiple citations, each must be analyzed and addressed individually.
Investigate the Cited Trademark Before Responding
Upon receiving the refusal notice, promptly check the following for each cited trademark through the China Trademark website:
- Status of the right: whether it is valid, whether renewal is approaching, and whether a non-use cancellation or invalidation action has been filed against it;
- Registration date: a mark registered for over three years with no trace of use is a potential target for non-use cancellation;
- Scope of approved goods: whether its goods are genuinely similar to yours;
- Rights holder: whether it is an affiliated company and whether it is willing to negotiate coexistence or assignment.
Common Strategies Against a Cited Trademark
- Argue that the two trademarks are not similar in pronunciation, appearance, or meaning, or that the goods are not similar;
- File a cancellation for three consecutive years of non-use against a cited trademark registered for over three years;
- Negotiate a coexistence agreement or trademark assignment with the rights holder of the cited trademark;
- Request suspension of the review proceedings pending a change in the status of the cited trademark.
A cited trademark is not an immovable obstacle. By ascertaining its status and choosing the right strategy, many similarity-based refusals can be overcome.
In such situations, we recommend consulting a registered trademark agent at MyTMBee to assess whether a refusal review evaluation is warranted before deciding on the next step.