Our patent attorneys have summarized frequently asked questions about trademark registration in an easy-to-understand Q&A format. We have put together useful points when filing and managing trademark applications, so please refer to them.
Q: What kind of trademarks can be registered?
A: A trademark is "a mark that distinguishes one's products or services from those of others." However, general expressions expressing quality, marks that could be misunderstood as public institutions, or marks that could be confused with someone else's trademarks cannot be registered. Specifically, it is generally difficult to register items that indicate the characteristics of products or services, or displays that only display place names.
Q: Can I use a trademark unless it is registered?
A: It is possible to use it. However, if someone else registers an unregistered trademark first, there is a risk of receiving a warning or receiving a claim for damages as a result of copyright infringement. It is recommended that you register your trademark before developing your business or launching a new product.
Q: Is trademark registration in Japan valid overseas? A: Trademark rights are valid in each country, so registration in Japan is only valid in Japan. If you wish to seek protection overseas, you will need to complete registration procedures in each country.
Q: What is the procedure for filing a trademark application?
A: ① Search for similar trademarks (free search available on J-PlatPat) → ② Create a trademark registration application (identify the product/service) → ③ Submit it to the Japan Patent Office (online or by mail).
Q: What are “designated goods and services”?
A: Trademarks have rights to specific goods and services. When filing an application, it is necessary to clearly state the "designated goods/designated services."
Q: What is the process from application to registration?
A: ① Submission of an application for trademark registration → ② Examination by an examiner (approximately 8 to 10 months) → ③ After the decision to register, trademark rights are generated by paying the registration fee → ④ If there is a notice of reasons for refusal, we will respond with amendments or written opinions.
Q: What kind of system is the "accelerated examination system"?
A: If you use the accelerated examination system, you can get the examination results in about 2 months. This is effective when you need to obtain rights quickly, such as when a trademark is already in use or a third party has started using it.
Q: What are the main procedures required after registration?
A: Applications include renewal of the term (every 5 or 10 years), change of registered name/address, and procedures for transferring trademark rights.
Q: What should I do if I receive a trademark infringement notice?
A: First, consult with an expert (patent attorney) and consider countermeasures. Trademark rights are valid for the combination of similar trademarks and designated goods or services, and dissimilarity or use to indicate quality may not constitute infringement.
Q: What are the benefits of consulting with a patent attorney regarding trademarks? A: By consulting with a patent attorney, you can: 1) Reduce the risk of rejection through accurate trademark research before filing, 2) quickly and accurately handle complex legal procedures and document preparation, and 3) take legally appropriate and effective measures in the event of trademark infringement or trouble.
Our office provides a wide range of support from trademark registration procedures to troubleshooting. 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).