Ask a Patent Firm or Patent Attorney for Trademark Registration

Can we register our trademark by ourselves?

We are now considering registering our trademark for the mascot we designed, but can we do that by ourselves?

If you do by yourselves, you have the advantage of minimizing relevant costs (fees), but it can be very troublesome and time-consuming if you have no professional knowledge. Therefore, you had better ask a patent attorney or patent firm or use an online service.

 I see! Can you explain in more details?

To register your trademark, you need to file a trademark application with the Japan Patent Office (JPO). You can file a trademark application by yourself without asking a patent firm. Then, why do most people ask patent firms to file trademark applications?

Hereinafter we will explain the advantages of asking a patent firm or patent attorney to take the procedures involved in trademark registration.

Advantages of asking a patent firm or attorney for trademark registration

You can save your time and effort

To register your mark, you must first file a trademark application with the JPO.

If the JPO determines, as a result of examination, that the trademark cannot be registered, the applicant will receive a notice of reasons for rejection from the JPO. If it is successfully determined by the JPO that the trademark can be registered, the registration fee must be paid.

To complete a series of procedures, you are required to prepare several documents such as an application for trademark registration, a written argument, a written amendment, a registration fee payment form, etc.

It takes a considerable amount of time to check what format and what information are required for each document to prepare the documents by yourself. You might sometimes have to do the same process many times.

If you ask a patent firm or patent attorney for trademark registration, necessary documents will be properly prepared and filed with the JPO by a professional.

You can proceed with procedures with the knowledge of professionals.

Please be advised that not all trademark applications are approved for trademark registration.

If you ask a patent firm or patent attorney to file an application, a trademark search is often conducted to explore the possibility of trademark registration prior to filing the application. Even if you are not familiar with conducting trademark searches, you may find out if there are identical or similar marks by using the JPO’s database. However, it is very difficult to determine the possibility that your mark can be registered.

Therefore, if you take the procedures by yourself, you may mistakenly file a trademark application for the mark that would not be granted a trademark registration from a viewpoint of professionals. If you ask a patent firm or patent attorney for trademark registration, you can obtain advices before filing, which will prevent you from filing an unnecessary application.

Further, when you receive a notice of reasons for rejection from the JPO, you can ask a patent firm to provide professional advices on how to respond to the notice and to prepare documents such as a written argument on behalf of you.

You can receive follow-up services after trademark registration, such as managing renewal registration deadlines

Once a trademark is registered, trademark rights are created. The effective term of trademark right is 10 years from the registration date, but the trademark right can be renewed by filing an application for renewal registration before the expiration of 10 years from the registration date.

If you request a patent firm or patent attorney to handle your trademark registration, most patent firms will be able to manage the deadline for registration of renewal, and when the deadline approaches (several months before), they will inquire whether or not you can register the renewal.

On the other hand, if you file a trademark registration (application) on your own without requesting a patent firm/patent attorney, you will be responsible for managing these deadlines by yourself.

If you are in charge of trademark-related work, you should have no problem if you have to go through the renewal registration procedure 10 years after the registration date, but if you are also in charge of other work or are a business owner, it will be very difficult to remember to go through the renewal registration procedure even after 10 years. However, if you are also in charge of other business operations or management, it will be very difficult to keep the procedures in mind even 10 years from now.

Even if you have already completed the procedures from application to registration on your own, it is possible to ask a patent firm/attorney to manage the renewal registration deadlines and procedures only.

Costs (fees) for requesting a trademark registration from a patent firm/attorney

If you register your trademark by yourself, you will only have to pay a stamp fee to the Patent Office. However, if you request a patent firm or patent attorney to register your trademark, you will have to pay two types of fees: a stamp fee to the Patent Office and a fee to the patent firm or patent attorney.

The following is a brief explanation of the legal fees to be paid to the JPO and the fees to be paid to patent firms and patent attorneys, divided into four major steps (from application to registration): prior trademark search, application, response to a notice of reasons for refusal, and payment of registration fees in response to a registration decision.

Prior Trademark Search

A prior trademark search is a search to determine whether your company name, brand name, logo, etc. can be registered as a trademark. You can use the J-PlatPat database of the Japan Patent Office to search by yourself to see if a trademark similar to the one you are applying for has already been registered, but it is very difficult to conduct a proper search without omissions, so it is better to have an expert patent attorney conduct the final prior trademark search. It is better to have an expert patent attorney conduct the final prior trademark search.

For your information, according to a survey of patent attorney fees conducted by the Japan Patent Attorneys Association in 2003 and 2006, the typical patent attorney fee (fee paid to a patent firm) for a character trademark search conducted prior to filing an application is approximately 20,000 yen per trademark per class, usually for multiple classes. Since most applications are filed by selecting multiple classes, if there are three classes, the cost would be 60,000 yen.

Filing an application

In the application for trademark registration, a legal fee to be paid to the patent office and a fee to be paid to the patent attorney at the patent office are required. If you file the application yourself, there is no fee to pay to the patent office, but if you submit an inappropriate application, you run the risk of receiving an amendment order or a notice of reasons for refusal, not obtaining the appropriate rights, not registering your trademark, or having to pay to file another application. Therefore, it is recommended that you contact a patent attorney with expertise in the field.

The legal fee at the JPO is 3,400 yen + (number of classes x 8,600 yen). For example, the JPO legal fees for filing a patent application for one to five categories are: 1 category: 12,000 yen, 2 categories: 20,600 yen, 3 categories: 29,200 yen, 4 categories: 37,800 yen, 5 categories: 20,600 yen, 6 categories: 29,200 yen, 8,600 yen, 8,600 yen, and 10,000 yen, respectively. Category 4: 37,800 yen, and Category 5: 46,400 yen. The average filing fee paid to a patent attorney at a patent firm is approximately 67,000 yen per division, according to the above-mentioned survey of patent attorney fees conducted by the Japan Patent Attorneys Association.

Responding to a Notice of Reason for Refusal

After filing an application for trademark registration, the application is examined by an examiner at the JPO. If the examiner determines that there is a problem with the trademark or the description of the designated goods or services (services) for which protection is sought, a notice of reasons for refusal will be sent.

The three most common reasons for refusal are as follows

• The existence of a prior trademark that is similar to the applied-for trademark

• The applicant’s trademark is a generic name, a common name, or a trademark that merely expresses the quality of the goods, etc., and has no distinguishing power.

• The designated goods or services stated in the application are incomplete.

When notified of these reasons for refusal, it is necessary to examine the contents and submit an amendment to correct the description of the designated goods or designated services in the application, or submit a written opinion stating that the trademark is not similar to the prior trademark or that it is distinctive. Failure to respond to a Notice of Reason for Refusal will result in the issuance of an Decision of Refusal on the grounds that the reasons for refusal remain unresolved, and will result in the trademark not being registered.

In principle, there is no legal fee charged by the JPO for responding to a notice of reasons for refusal. On the other hand, if you want to successfully obtain a trademark registration by preparing a persuasive opinion or amendment in accordance with trademark law, examination criteria, etc., expert knowledge is essential. In order to increase the likelihood of registration, it is advisable to request an expert patent firm or patent attorney. According to the survey on patent attorney fees conducted by the Japan Patent Attorneys Association, the average fees paid to patent firms and patent attorneys in this case are about 41,000 yen for the preparation and submission of an amendment and about 48,000 yen for the preparation and submission of a written opinion for one category. The fees will be higher if the number of categories to be filed increases or the difficulty of the opposition increases.

Payment of registration fees in response to an examiner’s decision to grant registration

If the registration is granted without a notice of reasons for refusal, or if the opposition to the notice of reasons for refusal with a written opinion or amendment is accepted and the registration is granted, the trademark can be officially registered by paying the registration fee within 30 days.

Payment of the registration fee requires the payment of a statutory fee to be paid to the patent office and a fee to be paid to the patent attorney at the patent office.

The legal fee at the JPO is 17,200 yen x number of classes for a 5-year payment; 32,900 yen x number of classes for a 10-year payment (after April 2022).

The total amount will be lower if you pay the 10-year fee in a lump sum than if you pay the 5-year fee twice, but the first payment will be larger as the number of segments increases. In addition, it is advisable to decide whether to pay in installments for 5 or 10 years.

Whether you choose the 5-year or 10-year term, you can continue to renew your trademark registration semi-permanently as many times as you wish, as long as you apply for renewal registration together with the payment of the renewal registration fee before the expiration of the term. The registration fee payment fee paid to a patent attorney at a patent office averages approximately 45,000 yen per category, according to the survey of patent attorney fees conducted by the Japan Patent Attorneys Association mentioned above.

After paying the registration fee to the JPO, the trademark will be registered in about two weeks and a trademark registration number will be assigned.

A certificate of trademark registration will be sent to your patent attorney in about three weeks after the payment of the registration fee. The attorney will send the certificate to the client by mail to complete the trademark registration process.

Money is not all for trademarks. I’d consider requesting a patent attorney to feel safe.

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