How to register a trademark?

I’m thinking of registering my own trademark, but I don’t know where to start.

What kind of preparation should I do?

If so, let me explain the necessary preparations and the process of registering a trademark in simple terms.

It is not that difficult if you check them in order.

However, there are risks involved in registering a trademark on your own, so make sure you understand the risks as well.

I see. I’ll decide if I should contact an expert or not after I hear an explanation.

Where do I start?

Let’s start with a trademark search.

We’ll make a prediction of registration in advance through the trademark search, and then we’ll file an application.

How to register a trademark?

When you come up with an idea for a new product or service, you may have thought about registering a trademark for the name, but wonder whether you can do it yourself or whether you should consult an expert.

This article provides a brief overview of the preparation required for trademark registration, the process and costs involved in registering a trademark.

Trademark rights are not freely available to everyone. Rights are granted only after submitting an application according to the Patent Office’s form and passing an examination.

The JPO examines the following two main points

(1) Whether a similar trademark has been registered earlier.

(2) Whether or not the trademark functions as a trademark (i.e., whether or not it has distinctiveness for identifying own and other products).

If you blindly file an application, you may end up being rejected during the examination process, which may mean that the entire procedure has been a waste of time and effort.

Therefore, we strongly recommend that you conduct a search before filing an application.

A simple explanation of the process of trademark registration is: search ⇒ application ⇒ examination ⇒ registration.

Let’s take a look at it in order!

Steps to Trademark Registration

The following is a step-by-step process for registering a trademark.

1.　Trademark Search

As mentioned above, in order to obtain a trademark right, it is necessary to pass the examination of the Patent Office.

Therefore, if you conduct a prior trademark search and assess the possibility of registration in advance by confirming the existence of similar trademarks, you can avoid unnecessary filing fees and the risk of infringing on someone else’s trademark rights.

There are two ways to conduct a search: one is to conduct a search on the Patent Information Platform (Jplatpat), and the other is to order a search service provided by a patent firm.

Jplatpat is free of charge.

Jplatpat allows you to search for a trademark to be searched according to your needs, such as the letters that make up the trademark, the name, and the shape of the trademark.

If you wish to conduct a search on your own, the detailed search procedure is explained in the following article.

On the other hand, a patent firm’s search service usually costs around 30,000 yen per trademark per class.

The patent office’s search service often includes a search to determine whether the trademark (mark) is distinctive in the field of goods or services in which it is to be used.

Since it is difficult to determine distinctiveness by yourself, it is a good idea to seek a patent attorney’s opinion in a search if you want to register a word commonly found in your industry as a trademark.

In addition, trademark rights are registered as a set of rights that includes the trademark (mark), the goods and the services for which the trademark is used.

Therefore, it is necessary to decide to some extent at the research stage what kind of products or services you will use the trademark for.

The Amazing DX service provided by our office allows you to easily search for a trademark category by specifying the goods or services, and also allows you to search for similar prior trademarks free of charge.

For more information, please visit the following sites

2.　Trademark application

Once the research has identified the possibility of registration, it is time to prepare the application documents.

There are two ways to file an application: by document or by using Internet software.

(1) How to file an application with documents

(i) Download the application form from the JPO website, fill in the necessary information, prepare an application form, and print it out.

　For details on how to prepare an application form, please refer to the JPO website (How to Prepare Application Forms and Application Forms)(only in Japanese).　

(ii) Purchase the necessary amount of patent revenue stamps according to the number of classes you wish to apply for, and affix them to the printed application form.

　*Patent stamps can be purchased at your local post office.

Calculation of the stamp fee: 3,400 yen + (8,600 yen x number of classes)

Official fee can also be easily calculated at the following JPO website (fee calculation system in Japanese).

※https://www.jpo.go.jp/system/process/tesuryo/jidou-keisan/kokunai.html

(iii) Submit the application form with the patent stamp attached to the JPO by mail or bring it with you.

(iv) After submission, the JPO will send you a money transfer form within a few weeks, so you need to transfer the fee for digitization.

This completes the procedure for filing an application by document.

(2) How to file an application using Internet software

Using Internet filing software, you can submit and receive documents online from your home or office.

In this case, there is no electronic filing fee for the prescribed procedures, and a form check function is available to avoid rejection due to incomplete format.

It is also advantageous if you intend to file multiple trademark applications.

However, it is necessary to first obtain an electronic certificate and set up the necessary procedures.

For details, please refer to the JPO’s “Preparation for Electronic Filing” website (in Japanese).

https://www.jpo.go.jp/system/process/shutugan/pcinfo/preparation/index.html

The only cost for filing an application yourself using the Internet software is the cost of patent stamps.

3.　Trademark Examination

Once the application is successfully accepted by the JPO, the examination will begin at the JPO in the order in which the applications are filed.

After passing the formality examination, the next step is the substantive examination (i.e., (i) whether a similar trademark has been registered earlier, (ii) whether the trademark has distinctiveness, etc.).

If the substantive examination reveals any reasons why the trademark cannot be registered, the JPO will send a notice of reasons for refusal.

The first examination result from the JPO (Notice of Reason for Refusal or Decision of Registration) is issued about 8 to 10 months after the application is filed.

The Notice of Reasons for Refusal may include reasons why the application cannot be registered, a deadline for response, and the examiner’s suggestions for resolving the reasons for refusal.

Reasons for refusal can be resolved by countering the Notice of Reasons for Refusal with a written opinion or by submitting an amendment in accordance with the examiner’s proposal.

If it is difficult to write a response to the notice of reasons for refusal, you may request a patent firm to handle this for you.

You do not have to pay any fees to the Patent Office for submitting an opinion or an amendment.

However, if you request a patent firm to handle the correspondence, you will be charged a fee.

4. Trademark registration

If the examination is successful or the reasons for refusal are overcome, the applicant will receive a decision of registration.

Upon receipt of the decision and payment of the registration fee within 30 days, the trademark will be registered and a certificate of registration will be sent to the applicant.

The certificate of registration includes the registration number, the trademark, the goods and services for which the trademark is used, the trademark owner, and the date of registration.

Trademark rights expire 10 years from the registration date.

However, if an application for renewal of registration is filed and a renewal fee is paid, the term of the right will be extended by 10 years.

Since an application for renewal of registration can be filed as many times as necessary every 10 years, the trademark right can be held semi-permanently.

You can apply for renewal to maintain your rights for the period you are using the trademark, and if you no longer use it, you can stop renewing and abandon it.

Costs

• Fees when filing an application

The fees to be paid to the JPO depend on the number of classes of goods/services to be designated when filing the application.

Patent stamp fee: 3,400 yen + (8,600 yen x number of classes)

In addition, if you request a patent firm, a fee will be charged.

Please refer to the following article for details on the prices.

• Fees at the time of registration

The stamp fee to be paid to the JPO as a 10-year trademark registration fee is as follows

　32,900 yen x number of classes

A trademark is granted for 10 years upon registration, but instead of paying the 10-year registration fee all at once, you may choose to pay it to the JPO in 5-year installments for the first and second terms.

The cost of stamps for payment in installments for the first and second terms is as follows

　 17,200 yen x number of classes

　 17,200 yen x number of categories

This is a little more expensive than paying for 10 years at once, but if you change your trademark or there is a possibility that you will not use it within 10 years, you can choose this option.　

Points to keep in mind when acquiring trademark rights on your own

As mentioned above, a trademark right is a set of rights that includes a trademark (mark) and the goods or services for which the mark is used.

”Trademark right” is the right to exclusively use a “registered trademark” for goods and services related to one’s own business.

Therefore, when applying for a trademark, it is necessary to accurately and completely designate the goods or services in which the trademark will be used.

After registration, no additional goods or services can be added to the trademark.

If the registered goods or services are different from the goods or services for which the trademark is actually used, there is a risk that the right cannot be exercised or that the trademark will be cancelled.

Please refer to the following article for more information on the risk of trademark cancellation.

In addition, attention should also be paid to trademarks (marks).

Although the basic rule is to obtain rights to the trademark that is actually used, there are many possible forms, such as a trademark that is a combination of graphics and letters, or a trademark that is a graphic (logo).

In such cases, it is necessary to apply for separate applications for the graphic and the text etc., in order to obtain rights that are appropriate to the manner of use.

In addition, if the trademark is a foreign language, it is necessary to consider the form of the trademark, such as by assigning a kana reading or by registering a trademark that expresses the reading (pronunciation) in katakana separately.

In the case of a foreign language unfamiliar to the Japanese, the alphabet may be read in accordance with the English reading or phonetic reading in the Roman alphabet. There is a risk that you will not be able to obtain rights for the intended reading (sound), and others will register a trademark using katakana for the same foreign word.

Because of these possible risks when filing an application yourself, it is advisable to consider the importance of your trademark and whether or not to consult a professional to handle the application.

Please refer to the following article for more information on how to file a trademark application.

Summary

I see. I guess I can do it myself if I think about it in that order.

Now that I know there are a lot of risks, I’ll consider it carefully.

Yes, it is.

The method of acquiring rights is not difficult, but sometimes it is better to get an expert’s opinion as to whether or not you can obtain effective rights.

Amazing DX allows you to conduct your own trademark search.

Once the prior search has revealed the possibility of registration, you can request an application online, which we encourage you to take advantage of.

If you have any questions, you can consult with our patent attorneys via chat.