Trademark Office Action

An Office Action is correspondence from examiner of the Japan Patent Office (JPO). It may be as simple as a request to correct specification of goods, or it may be a more complicated refusal to register your mark based upon any number of reasons for which an examiner will refuse to register a trademark.

If you have received an Office action from the JPO, you are being notified that there are problems with your trademark application. The Office action may state why your application was rejected and what requirements must be met for reconsideration.

A couple of common possibilities are;

Descriptiveness

Descriptive marks cannot immediately be registered. If your mark is being rejected on the basis of descriptiveness, you can 1) argue that your mark is not descriptive in itself or 2) present evidence to demonstrate acquired distinctiveness of your mark through substantial use in commerce.

You can demonstrate that your mark is inherently distinctive by submitting evidence of how your mark is used and how the words are typically used in common speech. Highlight the difference between the way in which you use your mark and the way the potentially descriptive words are used in speech generally. Furthermore, if your brand has been around for a while and you simply never got around to registering, it’s possible that your trademark has acquired something called secondary meaning. If you can provide evidence, such as advertisement, promotional materials, a track record of sales, survey evidence, and magazines or news articles demonstrating that your mark is used to refer to your particular business in a non-descriptive manner, you might be able to persuade the examining attorney that your mark is not descriptive any more.

The more common response to a claim of descriptiveness by the JPO examiner is to argue inherent distinctiveness of your trademark, possibly fanciful, arbitrary, or suggestive mark based on unfamiliar term, symbol and design to average Japanese consumers with an ordinary case.

Conflict with Senior Registration

A rejection based on a conflict with senior registration can be more problematic. This means the JPO examiner believes that your trademark would cause consumer confusion if she allowed the mark to register.

If your mark is being rejected on the basis of a conflict with senior registration, you can 1) argue dissimilarity of mark or goods/service, 2) amend to delete identical or similar goods/service from your trademark application (if it is of little interest to your business), 3) remove the senior registration by means of opposition, invalidation, or cancellation if available, or 4) negotiate with the senior registrant about the scheme of assign-back.

Where you are currently using your mark you’ll need to submit evidence to demonstrate that customers aren’t confused about who makes your products and who makes senior registrant’s products. You can conduct surveys among your shared consumer base, or provide evidence from a variety of sources such as advertisements, marketing campaigns, journals, and more. What you are trying to do is distinguish your trademark from the senior mark. The goal of your evidence should be to demonstrate that there is no current confusion, and there isn’t likely to be confusion in the future.
Please bear in mind that a mere consent from senior registrant is insufficient to persuade the JPO examiner.

The more common response to a claim of conflict with senior registration is to argue dissimilarity of your trademark and senior mark as long as there exists a clear distinction  in appearance, sound or concept between the marks.

You have 3 month to respond to an Office action from the JPO in order to keep your trademark application status intact. Upon payment of additional fee, it is allowed to request extension of the deadline (one-month extension at 1st time, two-month at 2nd time).


MARKS IP Law Firm can prepare an Office action response for all types of office actions – whether simple or complex.