How to file Trademark Registration on Your Own for Less Cost in Japan.

Do you want to register a trademark by yourself?

I’ve done a trademark search on my own using the free database Patent Information Platform and couldn’t even find anything similar, so I’m thinking of trying to apply for a trademark registration myself somehow! How can I do that?

You can ask a specialist (such as a patent attorney or patent firm) to help you with the procedure, or you can do it yourself if you prepare the documents yourself according to the form prescribed by the JPO.

I see. I’m thinking of doing it myself, so I’d like to know the process and what to expect when I do the procedure myself.

In this article, I will explain the process of applying for trademark registration on your own.
Broadly speaking, there are two means of filing: written submission and online submission. This article will explain how to prepare a written application and submit it by mail to the JPO.

Four Steps to the Written Submission Procedure

To complete the written application procedure, the following four major steps must be completed.

1. Prepare a computer and printer
2. Prepare the application documents
3. Purchase patent stamps
4. Send the application by mail

1. preparation of computer and printer

If the application is to be filed in writing, the documents should be filled out clearly and in a manner that cannot be easily erased, in black on a blank A4-size sheet of paper. Although handwriting is acceptable, we recommend that you use a computer and print it out, in case you make a mistake and have to rewrite the form.

About the computer

The JPO and INPIT have published a model (format) for application documents on their websites in WORD data format, so please prepare a computer that can edit WORD.

About printers

If your trademark is in color, please prepare a printer that can print in color. Either inkjet or laser printer is acceptable.

2. Preparation of application documents

Download and prepare the following model for the trademark registration application, which is available on the website.

We will explain how to write each item specifically, with examples of how to fill out the form.

【整理番号】Reference number

This item is used to distinguish the application from other applications of the applicant. Please use Roman letters (capital letters only), Arabic numerals, and “-” (hyphen), and enter within 10 characters.
〔記入例：００１、２０２２－１、ＡＢＣ－１〕

【提出日】Date of submission

Write the date the document is to be submitted (the date it is to be dropped off at the post office).
〔記入例：令和4年3月31日〕March 31, 2022

【商標登録を受けようとする商標】Trademark for which registration is sought

Please enter the trademark (letters, figures, etc.) directly within a square 8 cm square frame. If a separate sheet of paper is to be pasted, in principle, attach a sheet of paper the size of an 8 cm square (the borderline is not required).

** If the applicant wishes to register a trademark using the characters designated by the Commissioner of the Patent Office (standard characters), enter “standard characters” in the space above the “Designated goods or designated services and class of goods or services” column under the square frame line of “Trademark for which registration is sought”.
**Please note: The standard characters are subject to certain conditions.

【指定商品又は指定役務並びに商品及び役務の区分】Designated goods or designated services and classification of goods and services

Enter the information in the following manner. Multiple classifications of goods and services and designated goods (designated services) may be designated by repeating the same information.

• 【第　類】In the [Classification] column, the classification from 1 to 45 should be indicated in [ ].
  〔記入例：【第４３類】〕Class 43
• 【指定商品（指定役務）】In the [Designated goods (designated services)] column, describe the contents of the goods (services). When listing goods (services), separate them with “,” (double-byte comma).
  〔記入例：【指定商品（指定役務）】ラーメンの提供，飲食物の提供
  Example: [Designated goods (designated services)] Ramen restaurant services, providing food and beverages

【商標登録出願人】Applicant for trademark registration

Enter information about the applicant (individual, company, etc.).

• 【識別番号】In the [Distinguishing Number] field, enter the number of the “Notice of Distinguishing Number” if you have received one from the JPO. If you are applying for the first time, you do not need to fill in the [Identification Number] column.
• 【住所又は居所】In the [Address or Residence] column, enter details such as “〇〇県〇〇市〇〇町〇〇丁目〇〇番〇〇号”. If the identification number is entered, the “Address or Location” column may be omitted.
• 【氏名又は名称】In the [ Name ] column, enter the name of the payer if the payer is a natural person, or if the payer is a corporation, enter its name (collation) and the name of its representative in the [ Representative ] column next to the [ Name ] column.
• 【国籍・地域】In the [Nationality/Region] column, the [Name or Designation] column should be filled in if the applicant is a foreigner. In the case of a foreign national, if the country of residence is the same as that indicated in the “Address or Location” column, the “Nationality/Region” column is not required.
• 【電話番号】In the [Telephone number] column, enter a telephone number where you can be easily reached.

**Please note: If the applicant is an overseas resident (a person who does not have a domicile or residence in Japan), he/she cannot file the application on his/her own. Please note that an attorney (patent attorney or patent firm) with a domicile or residence in Japan is required to file the application.

（特許印紙）Patent Stamp

The application fee is [3,400 yen + (number of divisions x 8,600 yen)] (e.g., 12,000 yen for one division, 20,600 yen for two divisions). Affix a patent stamp in the amount equivalent to the filing fee to the upper left corner of the document. Indicate the amount of the filing fee in parentheses below it.

**Please note: Do not affix a split seal on the patent stamp.

3. Purchase of Patent Stamps

Patent stamps can be purchased at post offices throughout Japan. However, even relatively large post offices do not always have them in stock, so it is recommended that you contact the post office to confirm before purchasing.

4. Mailing your application

The mailing address and mailing instructions are as follows

• Mailing address: 〒100-8915　東京都千代田区霞が関３丁目４番３号　　特許庁長官　宛
• It is preferable to send the application by registered mail, simplified registered mail, or specially recorded mail with “商標登録願　在中” written in the margin of the address (on the front page).

**Please note: If not by mail, it is also possible to bring the application in person to the reception desk of the JPO.

• If you file the application in writing, you will be required to pay an electronic filing fee after the application is filed.
  When submitting in writing, a digitization fee will be required after application. A few weeks after the application documents are submitted, we will use the electronic fee payment form sent from the “Industrial Property Rights Electronic Information Center”. The digitization fee is [2,400 yen + (800 yen x number of documents to be submitted)].

Advantages and disadvantages of registering a trademark by yourself

I have listed the advantages and disadvantages of registering a trademark by yourself and requesting an expert such as a patent attorney or a patent office to act as an application agent.

There are two points.

• The first is whether to take the cost or labor (labor).
• The second is how much risk you can tolerate. This depends largely on your understanding of the trademark system.

About cost and effort (labor and time)

The troubles of registering a trademark by yourself are as follows.

• The trouble of preparation
• The trouble of creating documents to be submitted to the JPO
• The trouble of buying a patent stamp for the application
• The trouble of mailing the created documents
• The trouble of transferring the digitization fee

If you want to save money anyway, you can try it yourself. If you do it yourself, there is no charge other than the patent stamp fee. If you create an application and submit it to the Patent Office as explained in this article, you should be able to apply for trademark registration without any problems.

About risk

“Risk” can be mentioned as a different point of view from the cost and effort. If you apply, not all of them will be registered without any problem, and there is a risk that the examination by the JPO will determine that you cannot register.

For example, if there is a registered trademark similar to the previous one, it cannot be registered. There are other cases where registration is not permitted. If you cannot register as a result of the examination, you will be notified of the reason for refusal along with the reason. Since the decision on whether or not a trademark can be registered is technical and complex, we recommend that you ask a specialist to search if you want to know in advance whether or not your trademark can be registered.
If you would like to know in advance whether you can register your company, we recommend that you request a professional to do the research for you.

Risks that may not surface

Some risks may not surface until after a problem has occurred, such as

• The risk that the trademark (mark) used may not be properly protected.
• The risk that the goods or services to be used may not be properly protected.

The scope of trademark rights is determined by the contents of the “trademark” and “designated goods (designated services)” stated in the application document (application for trademark registration).
The examination by the JPO does not check whether the contents of the application are included in the actual use (business). Even if the application is registered in the examination, there is a possibility that there is a discrepancy between the application and the actual use.

In other words, if there is this discrepancy, it will not be noticed at the time of trademark registration and will only be noticed when problems arise, such as when counterfeit products are discovered as a result.

By requesting a professional, this risk can be minimized. Of course, if you are familiar with and knowledgeable about the trademark system, you will be able to reduce the risk as well.

Criteria for deciding whether to register a trademark yourself

The decision to register your trademark yourself or request a professional will depend on whether or not the following actions are acceptable if you are unable to register your trademark.

• Can you change the name to another name?
• If you are using it as a domain name, is it possible to get it back?
• Can you change your website, advertisements, or product packaging?

In addition, if the trademark you are using is already a registered trademark, can you change it to a different name?

I didn’t think there was any risk in that, because I thought that registering a trademark would automatically protect my business. I’ll balance the cost and effort, not to mention the risk, and decide whether to do it myself or request a professional to do it for me!

Summary

How was your experience? Based on the content and situation of the trademark you wish to register, you can either do it yourself or ask an expert to take care of the procedure, whichever is better and more appropriate, and then register your trademark!
What is important is that your business is protected by obtaining trademark rights, creating an environment in which you can focus on your business.

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

References and source information

• List of various application documents (forms for paper procedures):INPIT
• How to prepare application forms and applications（PDF：625KB）：JPO

• List of various application documents (forms for paper procedures) ⇒ 各種申請書類一覧（紙手続の様式）：INPIT
• [How to prepare application forms and applications ⇒願書、申請書の作成方法（PDF：625KB）：特許庁