In today’s highly competitive business environment, it is a critical part of corporate practice to develop a brand image that will stand out from the crowd. Maintaining your brand image requires strong trademark protection. Our team has extensive experience registering the trademarks of international clients, as well as defending our clients’ trademark rights through customs surveillance and by opposing and canceling conflicting trademarks.
1. Information We Need for Filing a Trademark Application
The full and non-abbreviated name and address of the applicant
The application number and filing date of any priority application
More than one class may be selected in one application. Priority can be claimed if the first application was filed within the last six months. A certified copy of the priority application must be submitted within three months of the Japanese filing date. A power of attorney is not required, unless the case is appealed or opposed in the future.
2. Description of Goods and/or Services
The Japan Patent Office (JPO) publishes a list of “Acceptable Descriptions of Goods and Services,” and the list is adhered to very strictly. Even descriptions of goods and services that meet the international standards of the Nice Classification (NCL) are often objected to in Japan. Therefore, the JPO’s Acceptable Descriptions should be used where possible.
If the actual goods or services do not correspond to any of the JPO’s Acceptable Descriptions, the goods or services should be listed specifically, accompanied by a detailed explanation of the goods or services, including documentation such as pamphlets or website printouts, so that the examiner can clearly understand the goods or services.
During prosecution, the applicant can more narrowly limit the description of goods and/or services, but cannot broaden the description or shift the description to cover different goods or services. With this in mind, it is recommended to include a broad identification of goods and/or services at the time of filing in order to support future limitation, especially when the actual goods or services do not correspond to the JPO’s Acceptable Descriptions.
3. Intent to Use the Trademark
Intent to use the trademark is sufficient for registering a trademark. In Japan, each international class is further divided to subclasses. If goods or services are selected from more than seven subclasses within a single International Class, the JPO requires a proof of applicant’s intent to use the trademark.
4. What is Registerable
A trademark may include colors or be three-dimensional. Mere colors without any figure, sounds, and smells are not registerable.
5. Time and Fee Schedules
Our preliminary trademark search takes approximately one week. Upon being instructed to file a trademark application, we will file the trademark application within a few days.
The official fee schedule can be found here. For our fees for filing and prosecuting trademark applications, please contact us.
6. Trademark Examination Process
The chart below shows the steps of obtaining a trademark in Japan. The examination can be accelerated, if the same trademark was also filed in a foreign country.