Our aim is to become the most energetic IP information transmitter in Kansai specializing in trademark and design.
Our firm is specialized in trademarks.
As our firm is specialized in trademarks, we have high level of expertise and an accumulation of experience in the field of trademarks. Let’s talk about “medical doctors” for example. Medics are generally licensed to provide medical treatment in all field of medicine, but they practice in their respective specialized areas such as ophthalmology, surgery, and internal medicine. It is the same in the field of intellectual property. There are firms specialized in patents of chemistry, electrical appliances and trademarks each holding their own strength and individuality. Just like in a practical situation where we would go see a doctor using a referral form when your medical condition does not meet your doctor’s area of specialty, many clients involved in complicated trademark matters decide on consulting with our firm referred from other IP and law firms. If you have trouble dealing with your trademark, please leave the case to us, for we are the specialists in this field.
Process of filing a trademark application is not that difficult itself. Our practice in filing a trademark application consists of, determining what kind of trademark application is needed, reviewing how the list of goods/services be drafted, providing appropriate advices before filing and proposing how to file strategically and obtain a strong trademark right.
How do we “file strategically” ? Obtaining and maintaining a trademark right requires certain amount of fees. It is not always the best to file everything client wishes to claim, filing the most powerful application taking into account the cost and effect is necessary. For example, if you are planning to use a mark that is a combination of designed characters and graphic figures, there are many matters to be considered, such as, whether we should file the trademark application in standard characters or not; should we file applications separately for each of the graphic figures and the designed characters; does the character itself have distinctiveness. Moreover, whether the trademark itself conforms to the client’s branding process is an important aspect.
What is a ” strong trademark right” ? We often see trademarks actually used in commerce differing from the mark registered. In such case, not only does it prevent the trademark owner from enforcing the trademark right appropriately, but it will often make the trademark right insufficient to stand against other enforcements. Why did we have to obtain the trademark right if it turns out unenforceable ? It is essential that we aim to protect the good faith and the power of brand, not just claiming the literal trademark registration, and obtain an enforceable “strong trademark right” to do so.
Our firm’s specialty besides consulting in the filing procedure, is the strength in conducting research and handling refusals in internal and inter partes examinations. Please feel free to contact us when you would like to know about the possibility of your trademark being registered or about the likelihood of being identified as use even after filing the trademark on your own. We are also willing to correspond to your consultation about receiving a refusal notice in an indispensable trademark application, or about how to state a warning. Even when it seems there is nothing you can do, you may find some clue to solve the problem by consulting us. Statistically, the odds of overcoming the office action and registering the trademark in cases received after issuance of the examiner’s objection is more than 90 percent.
