How to Read a Section 9 Objection Before You Reply

A Section 9 objection is not a verdict. It is the Registry telling you that, on the face of the record, your mark looks descriptive, generic or otherwise incapable of distinguishing goods and services.

Before drafting a single line of reply, separate the objection into three questions.

First, what exactly is the examiner saying the mark describes? A mark is rarely descriptive in the abstract. It is descriptive of something, for particular goods in particular classes. Narrowing the specification often narrows the objection.

Second, is the mark descriptive or merely suggestive? Suggestion requires a mental step from the consumer. If the consumer needs to think before arriving at the quality or character of the goods, the mark is doing distinctive work.

Third, is there acquired distinctiveness? Invoices, advertising spend, social reach and continuous use since a documented date carry more weight than adjectives. Evidence beats argument.

A reply that answers those three questions in order, with documents attached to the third, reads as a considered submission rather than a template.