What is a Notice of Reason for Refusal for a trademark application? How should I respond to it?

Trademark Procedures

2023年5月23日 2023年5月23日 Amazing DX guide

I heard that I may receive a Notice of Reason for Refusal after filing a trademark application, but I don’t really understand it.

There are cases in which a trademark application is not registered straight away, and the examiner of the JPO will issue a notice of reasons for refusal (reasons why a trademark cannot be registered). Even if a reason for refusal is notified, it may be possible to resolve the reason for refusal by submitting a written opinion or a procedural amendment within the response period.

I see. I would like to know more about this.

Key Points

– When reasons for refusal (reasons why a trademark cannot be registered) are found during the examination, a notice of reasons for refusal is issued.

– In response to a Notice of Reason for Refusal, it may be possible to resolve the reason for refusal by submitting a written opinion or a procedural amendment within the response period.

– There are various ways to respond to a notice of reasons for refusal, depending on the contents of the reasons for refusal and the circumstances.

– With Amazing DX, you can rest assured that you will be notified of a Notice of Reason for Refusal along with the measures to be taken upon receipt.

What is a Notice of Reason for Refusal?

When reasons for refusal (reasons why a trademark cannot be registered) are found during the examination by the Patent Office, a Notice of Reasons for Refusal is sent to the applicant, giving him/her the opportunity to submit a written opinion.

In response to the Notice of Reason for Refusal, the applicant may be able to resolve the reason for refusal by submitting a written opinion or a procedural amendment.

However, please note the deadline for submitting a written opinion!

It is also possible to change a part of the trademark, for example, and re-file the application based on the contents of the reasons for refusal.

Examples of reasons for refusal and responses

The following are examples of reasons for refusal and responses to them.

– Example of reasons for refusal (1): The indication of the designated goods and designated services is unclear and the content and scope of the designated goods and designated services cannot be ascertained, and therefore the goods and services are not deemed to be designated in accordance with the classifications of goods and services (Articles 6(1) and 6(2) of the Trademark Law).
Example of measures: Submit a written amendment to clarify the indication of the designated goods and designated services.
(In some cases, the examiner’s proposed amendment is included in the notice of reasons for refusal.)

* In the case of Amazing DX, since the designated goods and designated services are selected from the list of designated goods and designated services, the above reasons for refusal basically do not apply.

– Example of reasons for refusal (2): The applied-for trademark is similar to a previously registered trademark of another (Trademark Law Article 4.1.11).
Example of measures: Submit a written opinion, claiming that the trademark is not similar to any other person’s previously registered trademark.
Example of measures: Submit an amendment to delete the designated goods or designated services that conflict with the prior registered trademark.
Example of measures: Partially change the trademark and Re-file an application.

– Example of reasons for refusal (3): The applied-for trademark merely indicates the quality of the goods and has no distinctiveness (Article 3(1)(iii) of the Trademark Law).
Example of measures: Submit a written opinion and argue that the trademark does not merely indicate the quality of the goods and has distinctiveness.

*The above examples of measures are only examples. Various responses and measures are possible depending on the contents and circumstances of the reasons for refusal.
*A fee will be charged for responding to a notice of reasons for refusal.

[Reference] How to avoid a notice of reasons for refusal?
If a reason for refusal is anticipated before filing the application, it may be possible to avoid a Notice of Reason for Refusal by changing the contents of the application in advance.
If a notice of reasons for refusal is received after filing the application, it is possible to submit a written opinion or a procedural amendment or to change the trademark and re-file the application, as described above, but each of these actions will incur costs. Even if the reasons for refusal are resolved by submitting a written opinion, etc., it will take more time to register the trademark than if the trademark is registered straight away without receiving a notice of reasons for refusal.
Therefore, if a Notice of Reason for Refusal can be avoided at the pre-filing stage, the cost can be reduced and the time until registration can be shortened, since a response to the Notice of Reason for Refusal is not required.
For your reference, the following is an example of how to avoid each of the above examples of reasons for refusal.
– Example of how to avoid the above example of reasons for refusal (1) (Indication of designated goods or designated services is unclear)
It is possible to avoid the above reason for refusal by selecting goods or services from those listed in the JPO’s “Trademark Examination Standard regarding the similarity of goods/services”.
In this regard, please be assured that Amazing DX basically selects from the goods and services listed in the “Trademark Examination Standard regarding the similarity of goods/services” and, in principle, does not fall under the said reasons for refusal.
– Example of how to avoid the above example of reasons for refusal (2) (the applied-for trademark is similar to a previously registered trademark of another)
If a prior trademark search is conducted before filing an application and a similar prior trademark is found, it is possible to avoid the reason for refusal by changing the trademark or deleting the designated goods or services that conflict with the prior trademark.
In this regard, Amazing DX offers a free, simple trademark search that will predict similar prior trademarks that may interfere with the trademark you wish to apply for. Although it may be difficult for you to make a detailed similarity determination with prior trademarks by yourself, you can consult with an attorney specializing in trademarks, and if you wish, we can also conduct a detailed prior trademark search for a standard fee.
– Example of how to avoid the above reasons for refusal (3) (the applied-for trademark merely indicates the quality of the goods and has no distinctiveness)
If the trademark is considered to merely indicate the quality of the goods before filing the application, it is possible to avoid the above reason for refusal by changing the trademark to one that is highly distinctive and filing the application. It may be difficult to judge the distinctiveness of a trademark by yourself, but if you want to register a word that is common in your industry as a trademark, you may consult an attorney specializing in trademarks.
In this regard, Amazing DX will advise you from a trademark attorney as appropriate if the trademark is clearly considered to have no or low distinctiveness before filing the application. We can also conduct a detailed trademark search upon request for a standard fee.

[Reference] Distinctiveness
Distinctiveness is one of the requirements for trademark registration and is the power to distinguish between one’s own goods and services and those of others. Distinctiveness is judged in relation to the designated goods and services.
For example, if the designated goods are “books” and the trademark is “novels” and the trademark “novels” is clearly recognized as clearly indicating a certain content of the designated goods “books”, the trademark may be judged as merely indicating the quality of the goods and not having distinctiveness.

Response Period and Extension of Notice of Reason for Refusal

The response period for a notice of reasons for refusal is 40 days (3 months for overseas residents) from the date of dispatch of the notice of reasons for refusal. This response period can be extended by one or two months by filing a request for extension of time. Since there is an additional fee for requesting an extension, it is basically recommended to complete the response within the response period without extending the time limit.

On the other hand, depending on the content of the response, it may take several days to complete the response due to preparation of documents to be submitted after the response measure is decided. However, if the response measure is not decided by the deadline or the response is not made in time, it is possible to request an extension of time.

After responding to a Notice of Reason for Refusal

After responding to a Notice of Reason for Refusal, the application is re-examined to determine whether or not the trademark may be registered.

If the Examiner determines that all the reasons for refusal have been resolved and that there are no new reasons for refusal, the registration will be granted.
If the Examiner finds new reasons of refusal in the re-examination, another Notice of Reasons for Refusal may be issued.
If the reasons for the earlier refusal remain unresolved during the re-examination, a decision of refusal may be issued.

[Reference] Decision of Registration
Receipt of a decision of registration does not constitute registration of a trademark.
If the registration fee is paid within 30 days from the date of service of the decision of registration, the trademark will be registered and trademark rights will be granted.
Please note that if the registration fee is not paid, the trademark will not be registered.

[Reference] Decision of Refusal
If you are dissatisfied with the Decision of Refusal, you may file a request for an appeal against Decision of Refusal within 3 months from the date of service of the Decision of Refusal.
If an appeal against examiner’s decision of refusal is not filed, the examiner’s decision of refusal becomes final and binding and the trademark will not be registered.

Amazing DX can also respond to the Notice of Decision of Refusal!

If Amazing DX receives a notice of reasons for refusal after filing an application, we will inform you of the reasons for refusal along with the measures to take.

Even if the deadline is short, Amazing DX’s attorneys can respond promptly.

I see! Even if we receive a notice of reasons for refusal, it is sometimes possible to resolve the reasons for refusal by submitting an argument and/or an amendment. Amazing DX will let us know how to respond to the reasons for refusal, so we don’t have to worry.

この記事の監修者:

HARAKENZO WORLD PATENT & TRADEMARK

大阪法務戦略部長八谷　晃典

Specialist, attorney, Specially Qualified Attorney For Infringement Litigation, Supervisor