How to register trademark? Main points of application and registration process!

To register trademark

I’d like to register a trademark, but I’ve never done it before. I’m having a hard time figuring out where to start.

Asking an expert (patent attorney) to help you will go smoothly, but it is better to keep the key points in mind because you may not be able to make the right decision if you don’t know anything about it.

That’s right. What are the points to register a trademark?

This article will explain the gist and content of the trademark registration process so that you can get an overview.

Points to consider when registering trademark

In order to register a trademark, the following five major steps are to be completed step by step.

1. Determination of trademark (decide what kind of trademark and within what scope you want to register )
2. Search (check if similar trademarks have been registered)
3. Filing application (filing an application with the JPO)
4. Examination (examined by the JPO)
5. Registration (registration procedures are filed with the JPO)

１．Determination of Trademark

What name will you give to your newly launched company, new products or new services?

Since the name or mark used for a product or service is subject to trademark rights, it all starts with thinking about and deciding on a potential name for the product or service.

You may wonder whether the trademark should be filed with letters only or logo (including graphics). Please refer to the following article explaining this point, if you are interested.

You may already have a trademark in mind. If so, then let’s move on to the next step (search)!

２．Search

Once a trademark has been determined, you check the possibility of registering the trademark. A trademark is not guaranteed to be registered once an application is filed. If a similar trademark has already been registered, or if the trademark is a common name, the registration will not be granted.

Whether similar (identical or similar) trademark registered

If a trademark similar to the one you are considering has already been registered, the application will not be granted registration. This can be checked before filing an application. You can ask a specialist (patent attorney) to search, or you can search the database (Patent Information Platform: j-platpat) for free. Please refer to the following link for the operation.

Our firm offers a proprietary service called Amazing DX, a free trademark search and retrieval system.

Other cases which registration is not granted

Even if similar trademarks of other companies or other people have not been registered, there are cases where registration is not allowed under the Trademark Law system. For example, the commonly used name “strawberry” for the product “strawberry” cannot be registered as a trademark. In technical terms, a trademark that does not have “a function to distinguish itself and other products” cannot be registered. Since this is a case-by-case basis, we recommend that you consult a patent attorney for more details.

３．Filing Application

Next, you move on to the procedures with the Patent Office. The first procedure is to file a trademark application.
A special document called an application form (“application for trademark registration”) is prepared and submitted to the JPO. In addition to the trademark to be filed, you must also specify the goods or services for which you wish to register the trademark. The application can be submitted online or in paper form (by mail or by hand at the JPO).

If you submit paper documents, you will be charged a separate fee called “a digitization fee” in addition to the cost of patent stamps. After submitting the application to the JPO, you will receive a money transfer form by mail in about one to two weeks, titled “Information on Payment of Digitalization Fee”.
You must pay the amount shown in the form at a determined bank.

４．Examination

Trademark applications are examined by the JPO in the order in which they are filed.
At the JPO, the examiner determines one by one whether there are any similar trademarks or any other reasons that the trademark cannot be registered. The examination process takes approximately 6 to 11 months from the filing of the application.

In case of refusal of trademark registration

As a result of the examination by the JPO, you may receive a notice that your trademark cannot be registered. In such cases, registration may be granted by modifying (amending) or deleting the classes or goods to be designated, or by opposing the examination results (submitting a written opinion). Although you can handle this by yourself, we recommend that you ask a specialist (patent attorney) to handle this for you unless you are very experienced in such matters.

５．Registration

Once all examinations are cleared, the JPO will notify you of “Registration Decision”. Please note that even after receiving that notice, the trademark cannot be registered unless the registration fee is paid.

The registration fee is paid by submitting a special document called “a Registration Fee Payment Form” to the JPO. After that, the trademark will be registered as a right and “a Trademark Registration Certificate” will be issued.

I see! I now know that there are five steps to registering a trademark, each with its own points to keep in mind. I see that once you apply, you don’t automatically get it registered, but you have to go through the registration process as well.

For more information on the cost of trademark registration, please refer to the following article.

Summary

How was it? We hope you have learned that there are five major steps to registering a trademark. Each step has its own set of precautions and sometimes requires specialized knowledge.

We offer a unique service called “Amazing DX” that allows you to complete the trademark registration process online (on our website). Since our patent attorneys handle the procedures, the process is speedy and inexpensive, while ensuring the quality of our service. Please start from registering an account.