[Don't fail] How to choose a firm/patent attorney who is strong in trademark registration and applications? Thorough explanation of 5 points of comparison

"I have decided on a new service name, so I would like to register it as a trademark."

"I want to promote branding of the company name, but I want to avoid trouble"

When you start searching on the Internet, do you ever get overwhelmed by the countless options that come up, ranging from cheap online services to well-established patent firms?

• "Is it really okay to go to a place with lower costs?"

• "What happens to the money I paid if I fail the examination?"

• "Wouldn't the result be the same no matter which patent attorney you ask?"

It's natural to have these questions.

In conclusion, The success rate of registration as well as the way your business will be protected will vary greatly depending on who you ask (which office) for trademark registration.

Just as doctors have specialized fields such as "surgery" and "internal medicine," there are patent attorneys who are good at "patents (technology)" and others who are good at "trademarks (brands)." If you misjudge this point and choose only based on the immediate price, you may end up in a situation where you were unable to obtain a trademark even though you spent money and time, or you were able to register it, but you were unable to use the rights on the most important product.

In this article, we will thoroughly explain "How to identify a firm/patent attorney who is truly strong in trademark registration and applications" from the perspective of a professional who has handled numerous trademark cases.

Don't be fooled by superficial information; use it as a criterion for finding a partner who will reliably protect your business.

1. First of all, what are firms and patent attorneys that are "strong in trademark registration"?

Many business owners tend to simply think that ``good trademarks = quick and cheap application procedures'' or ``a large number of registered trademarks.''

Of course, speed, price, and number of achievements are important, but the essence of "strength" as seen by professionals lies elsewhere.

These are "The ability to break through when trouble (reasons for rejection) occur" and "strategic eye to protect the business."

The true value will be tested when the "Notice of Reasons for Refusal" arrives

When you apply for a trademark with the Japan Patent Office, an examiner will rigorously examine whether there are any similar trademarks and whether it is just a common name.

Sometimes you may be able to register easily, but other times you may receive a notification that says ``Registration is not possible at this time.'' This is called a "notification of reasons for refusal."

Actually, when this notification arrives, that is when a patent attorney's skills are shown.

• For a general office (mainly office work):

  Sometimes we immediately raise the white flag, thinking, ``The patent office has told us no, so let's give up.'' Or, there are cases where only a formal objection is made and the case does not pass the examination as a result.

• For an office that is strong in trademarks:

  We judge that there is room for rebuttal to this reason for refusal, and create a rebuttal document called a **``written opinion''**, making full use of a vast amount of past court precedents and trial decisions. We construct logics such as ``There are trademarks that look similar at first glance, but there is no risk of confusion if we consider the actual circumstances of the transaction,'' or ``this word has the characteristics of a coined word,'' and overturn the examiner's judgment and lead to registration (reverse registration).

This ``dirty negotiation skills'' and ``writing skills'' are the hallmarks of a patent attorney who is good at trademarks.

Proposal ability to protect your business in "areas" rather than "points"

If you just apply with the "naming" and "category (genre)" as instructed, you can do it with AI or cheap services.

However, a strong patent attorney conducts hearings from the following perspectives.

• "Currently you are selling apparel, but are you thinking about opening a cafe or selling miscellaneous goods in the future?"

• "Would you like to use this logo not only horizontally but also in abbreviated form as an icon?"

It is important to be able to predict the future image of your business and propose a complete range of rights (designated goods and services).

A right that is too narrow will give an opening to other companies (counterfeit products cannot be excluded), and a right that is too broad will result in wasted costs. A ``strong office'' has this sense of balance.

2. 5 checkpoints to identify a firm that is strong in trademark registration

So, what exactly should I look at on the homepage or during the interview?

Here are five checkpoints to avoid failure.

① "Trademark specialty" description and track record

A fact in the patent attorney industry is that many patent attorneys are experts in "patents (technological inventions)". Many of our teachers come from science backgrounds, and although they are good at writing technical documents, there are actually many teachers who are weak in fields that involve brand theory and marketing, such as trademarks.

When checking the homepage, please pay attention to the following points.

• Is the word "trademark" on the top page or in a prominent position (is it done "in conjunction" with the patent)?

• Are specific "number of trademark registrations" and "handling examples" listed?

• Do you have a track record in your industry (IT, food and beverage, beauty, manufacturing, etc.)?

In particular, a firm that understands industry-specific customs and trends (such as buzzwords) will be more persuasive when asserting the distinctiveness (uniqueness) of a trademark.

② Success rate and attitude of "intermediate processing (rejection handling)"

As mentioned above, it is important to have the ability to deal with problems in the examination (intermediate processing).

When making an inquiry, please try asking like this.

"If you receive a notice of refusal from the Japan Patent Office, how will you respond?"

"Are you willing to consult with me even if I have a difficult case that has been rejected elsewhere?"

Be careful if you only receive an optimistic answer to this question, such as "Our research is perfect, so it's okay." There is no 100% reliable search because the subjectivity of the examiner is involved in trademark examination.

On the other hand, you can trust a firm that presents specific solutions (Plan B), such as ``In that case, we will write an opinion using past case law 〇〇'' and ``There is a risk, but if you make this change, there is a possibility that the case will pass.''

③ Transparency of fee structure (total cost)

Costs for trademark registration are mainly incurred twice: "at the time of application" and "at the time of registration."

I often see advertisements that say "Application fee is 0 yen!", but it is dangerous to jump just because the price is low. This is because you may end up incurring high costs later on.

[Common additional cost traps]

• High success fee: Although the application is cheap, the registration fee is higher than the market price.

• Rejection handling costs are extra: The "opinion writing fee" when the application is rejected is set to be high.

• Term management fee: Fees are incurred just for notification of renewal time.

A strong agency will provide a clear estimate of how much it will ultimately cost to complete the registration, rather than relying on the immediate low price. Let's compare and consider total cost including ``rejection handling fee''.

The more honest and strong a patent attorney is, the more honest he will be in telling you about any inconvenient risks during the preliminary trademark search stage.

• "The possibility of registration is 60% (△ judgment). The reason is that the prior trademark has 〇〇"

• "It will be difficult to do so as is, so let's consider applying as a set with the logo."

In this way, choose an agency that will explain to you all of the following: ``Why is it difficult?'' and ``How can you improve your chances?'' Agencies that only say nice things tend to avoid responsibility when problems arise later.

3. Comparison by type: low-cost online services vs. patent attorney firms specializing in trademarks

Which should you choose, "AI-based, low-cost online trademark services," which have been increasing in recent years, or "a firm staffed by a patent attorney?" The characteristics of each are summarized in the table.

Conclusion: Proper use is important.

If you don't have a budget and want a completely unique coined word (there's almost no chance of it being duplicated with anyone else), using an online service is a smart choice.

However, in the case of ``an important brand that you definitely want to get a trademark for'' or a ``name that includes even a little bit of common language (that may be similar to other companies')'', we strongly recommend that you contact a specialized patent attorney firm from the beginning.

This is because if you file an application using an online service and it is rejected, and then rush to see a patent attorney, you end up paying more money due to handover fees and other costs.

4. Three reasons why intellectual property firm EVORIX is chosen for trademark registration and applications

Up to this point, we have been telling you how to choose a strong firm, and our firm, intellectual property firm EVORIX, is a group of trademark professionals who meet all of these criteria.

We would like to introduce the reasons why we continue to be chosen by many companies.

① Strong against "reverse registration" from notification of reasons for refusal

The biggest feature of our firm is "persistence to never give up".

We actively accept consultations on cases where the application was rejected by another office or by you.

With our huge database of past trial decisions and unique logic construction know-how, we have won numerous registrations even in seemingly difficult cases.

(*If you have any specific achievements, please add them here: For example, "Last year, we succeeded in registering XX% of the applications that were rejected elsewhere.")

② Strategic proposals from a "business perspective"

We are not just a "procedure agent".

After hearing about the customer's business model, we will propose not only the "currently necessary rights" but also the "rights to prevent future risks".

We eliminate unnecessary categorization to reduce costs while providing strong brand protection that cannot be imitated by competitors. As a partner in your business, we will work with you to develop your trademark strategy.

③ Speedy response and clear accounting

“Time is money.” We place great emphasis on speed from request to application, allowing applications to be filed on the same day/next day at the earliest.

In addition, we will always provide you with a detailed estimate of costs before we begin work, and we will proceed only after your approval. There is no chance that you will receive a bill that you do not know about later, so please feel free to contact us.

5. Frequently asked questions (FAQ)

Finally, we will answer some frequently asked questions regarding trademark registration.

Q. Can I apply by myself?

A. It is possible, but not recommended.

Although it is possible to prepare and file an application on your own, there is an increased risk of not being able to register if you make a mistake in selecting the category or fail to investigate similar trademarks. Additionally, once the documents have been submitted, they cannot be changed later, so there is a possibility that you will make an irreversible mistake.

Q. I am a local company, can I make a request?

A. Yes, we are available nationwide.

Currently, we receive many requests from customers who are far away, as we are able to complete communication through Zoom, chat tools, and email. There is no need to visit our office.

Q. The name has not been finalized yet, can we discuss it with you?

A. Of course.

Rather, it is best to consult with us before the final decision is made. We can advise you from the perspective of ``Which is easier to trademark, Plan A or Plan B?'', so you can avoid unnecessary rework.

Summary: Trademarks are the "foundation" of business. Don't choose a partner based on price alone; choose a partner that can protect you

Once registered, a trademark becomes an important asset that continues to protect your business for 10 years (permanently if renewed).

If you choose a cheap service, begrudging the difference of tens of thousands of yen at the time of application, and end up not being able to register or end up with rights that are inconvenient to use, you are putting the cart before the horse.

If you are sued for trademark infringement or are forced to change your brand name, the loss can range from tens of millions of yen to hundreds of millions of yen.

That's why you should choose "a truly capable agency" as your partner.

At our office, we accept initial consultations and simple trademark searches.

Any concerns you may have, such as ``I want to know if I can register with this name'' or ``I've been told elsewhere that it's difficult, but is there anything I can do?'' are welcome.

We will do our best to support you in protecting your precious brand. Please feel free to contact us.

AUTHOR

Takefumi SUGIURA （杉浦 健文）

EVORIX Intellectual Property Law Firm　Managing Patent Attorney

Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).

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