Where to consult a lawyer’s office for trademark registration? Verify where to ask for trademark application and registration

Who should I ask to register my trademark?

I want to register a trademark, but it’s my first time and I’m not sure if I can do it by myself… I’d like to ask for some professional help, but the trademark seems to be regarding a legal matter, should I ask a lawyer?
Trademark registration is not something you can simply ask a “lawyer” to do for you! There are many options for trademark registration. If you know these options, you can choose the right one for your situation.
Sure, I’d like to gather all sorts of information for consideration. Let me know what choices I can make!!!

This article describes where to request trademark procedures, not just trademark registration.

Who is eligible to request trademark registration?

Trademarks are registered with the Japan Patent Office, a national agency, which is a system that grants rights called trademark rights. Some of you may think of rights and systems as regarding legal, and it is right! Trademark Procedure requires qualification as an agent who can file an application with the public office on behalf of the applicant, all of which are legal qualifications. There are only two qualifications to act as an agent: “attorney-at-law” and “patent attorney”.
Other legal qualifications include “Labor and Social Security Attorney”, “Certified Administrative Scrivener” and “Judicial Scrivener”, but none of these qualifications can file a trademark application on your behalf.

Asking a lawyer to do it for you

Now, let’s ask a lawyer to register your trademark. What is the difference between a patent attorney?

Attorneys are experts in “court cases

Although attorneys are qualified to represent you in applying for trademark registration, they are not necessarily experts in “intellectual property rights”, especially “trademarks”. Lawyers have their specialties in various areas of law. If you do not check whether the attorney you are hiring specializes in “trademark” matters, it may be difficult to obtain expert understanding and advice when you are new to the subject matter. If you are going to hire a lawyer (or firm), you need to find out in detail whether they specialize in this area or not.

On the other hand, “litigation” and other “court” matters are the specialty of attorneys. Although it is still necessary to find a lawyer (or firm) that is strong in trademark-related matters, since a trial is almost always an important phase, the need to consider a good lawyer (or a firm) as a client may not be much different from other court cases.

In anticipation of such a “trial” relationship, there is also the option of requesting trademark registration from a lawyer (firm) from the beginning. If you request a trademark registration from the beginning, you will not have to explain your case from the beginning, and you will not have to spend time looking for a lawyer (firm), so you will be able to make an initial move more quickly.

Considering the risk of litigation, it seems more convenient to hire a lawyer from the beginning. But, as someone who only wants to register a trademark, for the time being, I think it would be a hurdle to start looking for a good lawyer…

Hiring a Patent Attorney

Now, let’s ask a patent attorney to register your trademark. What are the advantages of hiring a patent attorney compared to a lawyer?

Patent Attorney is an expert in “Intellectual Property Rights

A patent attorney is a specialist in “intellectual property rights” and is the most qualified to handle trademark registrations on your behalf. Unlike lawyers, patent attorneys do not specialize in a wide range of fields, and therefore, it is not difficult to find a patent attorney who specializes in “trademarks” among other intellectual property rights. Trademark attorneys specialize in all aspects of trademark procedures and can be expected to provide the appropriate understanding and advice to first-time trademark applicants. They will also be able to provide analysis and suggestions based on their expertise and experience regarding trademark searches before filing an application and responses after receiving a notice of refusal (e.g., submitting an amendment or a written opinion).

However, once the case goes to “court”, a patent attorney cannot act as a sole litigation attorney. If a patent attorney* acts as a litigation attorney, he/she must, in principle, be appointed jointly with an attorney.
Only a patent attorney (a patent attorney who is qualified to represent a litigant in a specific infringement suit (Article 2, Paragraph 6 of the Patent Attorney Act)) is eligible to represent a litigant in a specific infringement suit (Article 2, Paragraph 6 of the Patent Attorney Act).

Handling of trial cases is possible

However, patent attorneys can handle trial cases independently. Trial cases include appeals against the examiner’s decision of refusal, where the applicant seeks to have the examination redone, opposition to trademark registration where the applicant points out a problem with a third party’s trademark application that is about to be registered, and trials for cancellation of a registered trademark because it has not been used for a long time. These are filed with the JPO. If the matter cannot be resolved even at this stage, the case will be transferred to litigation.

Please refer to this article for an overview of the process of hiring a patent attorney.

Well, I found a patent firm that handles trademarks right off the bat! As a first-time trademark applicant, I’m more comfortable with an expert on my side. But I’m a little worried about the cost.

For those who want to keep costs down or are familiar with the process

However, some people are still concerned about the cost of hiring a lawyer or patent attorney. There are also various factors such as wanting to file a trademark application by oneself but not having the facilities, wanting to go through an expert, or being worried about responses after receiving a notice of refusal. For those people, we recommend Amazing DX. The cost starts from 53,000 yen from application to registration. The service is managed by a patent firm, and you can easily consult with a patent attorney via chat during the request process. If you are notified of a reason for refusal, you will not have to worry about not knowing what to do or not being able to think of a way to respond because you are working through a patent firm.

For more information on the fees involved in obtaining a trademark registration, please refer to this article.

I see that with Amazing DX I can keep my peace of mind, but at a lower cost! It’s an important trademark, so I’ll look at the view from different perspectives.

Who should I hire in the end?

As we mentioned, every agent has its advantages and disadvantages. If you cannot consider the risk of litigation at this stage, and you want to register your trademark, for now, it is better to first request a patent firm. When you check the estimate of the processing fee from trademark application to registration at the patent office you are going to request If you feel that the cost is too high, please consider Amazing DX as one of your options.

Supervisor for the article:
大阪法務戦略部長 八谷 晃典
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