How to respond to office actions

The following examples explain how you can overcome the obstacles reported in the office action.

Show that your trademark is distinctive

If your trademark is considered to lack distinctive character, get evidence of the use of your mark and of its being well known in your line of business. This proof of use evidence helps you to show that your trademark has acquired distinctive character through use as a special symbol of your products.

It is important that your evidence dates from the time before filing the application. It can consist of, for instance, newspaper articles, advertisements or brochures. The best proof of use evidence is provided by market surveys which clearly show that your target group considers your mark as a trademark.

Make sure that your evidence is extensive enough and shows how and for which goods or services the proposed mark has been used.

Reduce your list of goods and services

If an earlier trademark or company name prevents the registration of your mark, you can reduce your list of goods and services by leaving out all goods or services that are similar to those covered by the earlier registration. If your application no longer concerns goods and services identical or similar to those covered by the earlier mark or company name, the obstacle is usually removed.

If your trademark is considered to lack distinctive character only in respect to certain goods or services in your application, you can leave them out. Then we can register the mark for those goods or services for which it has distinctive character.

Get consent to registration

If an earlier trademark or company name or a surname prevents the registration of your mark, you can usually overcome the obstacle by getting the owners’ consent to the registration. Submit the consent to us in writing.

Revoke earlier registrations

Find out whether the earlier mark has been used during the last five years. If not, and if the owner of the mark fails to give a proper explanation, the registration can be revoked by the Market Court (Finnish Trademarks Act, sections 26 and 42). Similarly, a company name can be revoked under the Finnish Company Names Act (section 19). There are also other grounds for revocation set by law, for example if the mark has become generic.

Please note that you cannot make changes to your trademark in the office action phase. We can only accept minor changes which do not alter the general impression of the mark. If you want to modify the mark to such an extent that you can overcome an obstacle, the changes are not minor. However, you can always file a new application for your altered trademark.

Submit your response in writing

Send your response to the office action in writing either by post to Finnish Patent and Registration Office, FI-00091 Helsinki, Finland, or by email to tmposti@prh.fi.

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Latest update 11.10.2017