It’s not just about search! Checkpoints before trademark registration

I have a trademark I want to register, but there are so many things I need to check before filing. I don’t know what to do in the end!

Certainly, there are many things to keep in mind as we need to check both branding and legal aspects.
Let’s go through them one by one and summarize them.

Here is a summary of what you should check before filing a trademark application.

For those who want to know what to check before filing a trademark application.

Does the trademark you are applying for match your brand strategy?

If your brand strategy dictates the colors and aspect ratio of your logo, make sure that these are not disrupted when filing the application.

• If you file in black-and-white binary format, fine patterns and other details may be crushed. Choose an agent who will consider this.
• If you are applying for an image/logo trademark, you should make sure that the trademark is square with margins, otherwise, it may be registered with an unintended aspect ratio in some cases.

Is the trademark registrable?

There are requirements for trademark registration.

For more information, please check the following page.

The requirements for trademark registration can be roughly divided into the following three categories

1. a trademark that cannot be distinguished from the goods or services of others
2. a trademark that is confusingly similar to the mark of a public institution or the trademark of another
3. a trademark that is likely to harm the interests of consumers

Distinguishable from the goods or services of others?

For example, if the mark “apple” is used on a fruit, it is difficult to tell whether it is a mark or a generic “apple”.
Such items that cannot be distinguished from other people’s goods or services (i.e., low distinctiveness) cannot be registered because if someone else registers them, it will be a problem for everyone.

Note that even if the possibility of registration is low due to the issue of distinctiveness, the examination result of “not registrable due to low distinctiveness” may deter other companies from registering the same trademark.
Therefore, there is a strategy to dare to apply for a trademark even if the distinctiveness is low.

Is it confusable with the mark of a public institution or with another person’s trademark?

In some cases, you may not be able to register a trademark for which others have rights, such as the followings.

• Identical or similar to another’s applied-for/registered trademark.
• Identical or similar to those that others have registered as seeds and seedlings

In addition, some items cannot be registered to protect the dignity of others.

• Names, famous stage names, etc. of others
• National flag, national anthem, etc.

In practice, many of these trademarks are often rejected because they are “trademarks applied for/registered by others”.
You can find out to some extent whether your trademark can be registered or not by conducting a trademark search in advance using a free database.

I see that I need a trademark search before filing.
But not only identical trademarks, but also very similar trademarks are not allowed.
I wonder how to determine whether they are similar or not.

That decision is indeed a difficult one.
It’s a good idea to have an experienced patent attorney do the research beforehand.

If you ask a patent attorney, even if the patent office notifies you during the application process that your trademark is similar to someone else’s trademark, you can respond with a written opinion to refute it.

In some cases, you can file an application for another person’s name, etc., if you obtain his/her permission.
(e.g., cases where a subsidiary files an application for the name of a parent company, or where an entertainment production company files an application for the name of an artist to which it belongs).
Check to see if you can obtain a letter of permission in advance.

Is there any risk of harm to the interests of consumers?

For example, if a box marked “~~ apple” contains “banana”, the buyer will think “I was cheated!”
Thus, a trademark that is likely to harm the interests of the buyer cannot be registered.

Do the designated goods/services cover the actual goods/services you deal with?

If the scope of the designated goods/services is too narrow, you will need to file additional trademark applications to safely use that product, which will cost you money and effort.
Conversely, if the scope of the designated goods/services is too broad, the JPO may refuse registration because there is doubt as to whether the trademark will be used. In such cases, it is important to be prepared to submit a business plan, etc., as this may overcome the problem.

Checklist before filing a trademark application in Japan

• Is the trademark in color, font, and aspect ratio consistent with your brand strategy?
• Is the mark distinguishable from the goods or services of others?
• Does the mark closely resemble another person’s applied-for or registered trademark?
• If the applied-for trademark is the name of another person, have you obtained a consent letter?
• Is the applied-for trademark misleading as to the place of origin, quality, etc.?
• Is the trademark not otherwise unregistrable?
• Does the designated goods/services cover the actual goods/services?

If I had a checklist when I was applying, I’d have peace of mind that there are no nooks and crannies.

For those who want to know what to check after registering a trademark and before starting to sell/service your products.

On the other hand, even after you have registered your trademark and before you sell your products or start your services, there are some things you need to check regarding your trademark.

For those who want to check for the existence of prior trademarks before filing a trademark application

Before filing a trademark application, you should search for any prior trademark applications filed by others.

Here is some information for those who want to check if there is a prior trademark application.