After a trademark refusal, the key actions are: decide within 15 days of receiving the Trademark Refusal Notice whether to apply for a refusal review; conduct a professional analysis of the refusal grounds to assess the likelihood of success at review; and then decide whether to pursue review, refile, or give up.
Step 1: Understand the Grounds for Refusal
The refusal notice will state the legal provisions relied upon and any cited trademarks. Common grounds fall into two categories:
- Relative grounds (Article 30 of the Trademark Law): your mark constitutes a similar trademark on identical or similar goods to a prior filed or registered cited trademark. This type of refusal offers considerable room for argument.
- Absolute grounds (Articles 10, 11, and 4): violation of prohibited signs, lack of distinctiveness, or a finding of bad-faith application made without intent to use. These refusals are harder to overcome, but a refusal for lack of distinctiveness can be remedied with evidence of use.
Step 2: Evaluate the Available Options
- Apply for a refusal review: the statutory deadline is 15 days, after which the right is extinguished. Review is the first choice for most applicants because the original filing date can be preserved.
- Refile: submit a new application after modifying the trademark representation or adjusting the goods. The cost is lower, but you must queue again and the filing date starts over.
- Dual-track approach: file a review for the core trademark while simultaneously submitting a modified new application as a backup — a common and prudent strategy in practice.
Step 3: Decide Whether to Engage an Agency
A refusal review is a quasi-judicial procedure that requires a statement of grounds structured around the legal provisions, supported by evidence. If the refusal involves professional issues such as similarity assessment or distinctiveness findings, it is advisable to engage a trademark agency; self-filed review briefs often fail due to insufficient argumentation.
Common Misconceptions
- Assuming the refusal is final and missing the 15-day deadline.
- Refiling an identical trademark without any analysis — it will most likely be refused again.
- Overlooking the publication opportunity for the approved portion of a partial refusal.
If you are unsure about any of the above, you can first obtain a refusal review assessment at MyTMBee, where a registered trademark agent will provide an analysis before you take action.