Trademark Specialists Provide Comprehensive Support, from Registration to Infringement Litigation
Although both are classified as “IP,” patents and trademarks differ entirely in nature and procedures. Therefore, Primeworks believes that trademark specialists are essential for proper brand protection, and thus, multiple patent attorneys specializing in trademarks and related fields handle these matters.
A dedicated team of trademark patent attorneys and specialized administrative staff provides broad support, encompassing domestic and international trademark registration in various countries, as well as actions ranging from issuing warnings to infringers through to infringement litigation.
Fields
We handle all products and services (the fields we most frequently handle are listed below).
- Packaged software
- Electric devices / telecom devices
- Fashion brands
- Advertising / business consulting
- Communication services
- Beauty, barbers, and medical services
- Toys / games
- ASP services
- Magazines / books
Services
Trademark Registration
We assist with the full process of trademark acquisition, from initial consultation through filing to eventual registration of your company’s trademarks.
Trademark Clearance Search
We investigate whether a proposed trademark is similar to a third party’s prior trademark or infringes on existing trademark rights. We then prepare a search report including risk assessment and suggested courses of action.
Preparation of Legal Opinions and Appraisals
We provide clear legal conclusions, in the form of an appraisal or legal opinion, based on specialized knowledge regarding whether a trademark is similar to another’s prior trademark, infringes on existing rights, or conversely, whether a third party is infringing on your trademark.
Handling of notification of provisional refusal (Office Action)
If you are struggling with a Notice of Reasons for Refusal (Office Action) received for an application filed independently, we can take over the representation from the point of responding to the refusal.
When you file an international application under Madrid Protocol, requesting territorial extension to Japan, you may receive an Office Action from the Japan Patent Office. A foreign applicant cannot respond to the Office Action on their own. A response should be filed only via a Japanese agent. In this case, Primeworks serves our foreign client by studying and proposing a proper response to the Japan Patent Office. We will also file a response with the Japan Patent Office as a representative of our foreign client.
Handling Third-Party Warning Letters
If you are using a trademark and receive a warning letter from a third party requiring a response, we will analyze the situation, determine the appropriate course of action, and draft the corresponding reply letter.
Assignment of a trademark right
Primeworks can conduct a negotiation to assign a trademark right, draft an assignment contract, and file an application for recordal of transfer of a trademark right with the Japan Patent Office on behalf of our clients.
Request for renewal
The duration of a Japanese trademark right is 10 years since the date of registration. The duration of a trademark right can be extended upon request. A request for renewal must be filed during the period from six months prior to the expiration of the duration of a trademark right to the date of expiration thereof.
Other services
Primeworks can undertake all procedures related to a trademark right such as filing of opposition to registration, request of an invalidation trial, and procedures to change the name or address of an owner of a trademark right. For requests for trademark applications and other inquiries, please contact us.
Examination Process
The following information is required to file a trademark application in Japan.
You need not file a power of attorney.
