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What is a trademark accelerated examination application?
A trademark is a sign, such as a word, symbol or shape, used to distinguish one business's goods from those of others.
In order to obtain exclusive rights to a trademark, the trademark must be registered.
The usual sequence is a trademark clearance search, filing, examination, response to any office action, publication for opposition, a decision to register, payment of the registration fee, and registration. If an office action is issued, the applicant must address the grounds for refusal.
It takes approximately 14 months for a trademark to be reviewed after application. Even if you receive notification of an publication, you must go through an opposition period rather than registering right away, and if you are notified of reasons for rejection, it takes time to respond and receive the examination results. Ordinary examination and registration can take an average of 16 months or longer.
With accelerated examination, the first examination result may be available in approximately three months.Eligibility requirements must be met, and supporting evidence must substantiate the ground for requesting accelerated examination.
Subject to accelerated examination application
In order to apply for accelerated examination, you must meet one of the criteria listed below and submit documents proving your qualifications.
① When it is clear that the applicant is using or preparing to use the applied trademark for all designated goods. ② In any of the following cases, it is recognized that a person other than the applicant is using the same or similar trademark as the trademark applied for as a business for designated goods without justifiable grounds after filing the application. A. When the applicant warns a third party that use of the applied trademark is prohibited B. When the applicant seeks an injunction prohibiting a third party's use of the trademark c. In addition, if the applicant does not permit a third party to use the applied trademark ③ An application on which the applicant has based a written warning under Article 58(1) of the Trademark Act concerning another party's use of an identical or similar mark for identical or similar goods ④ If the applicant has received a written warning pursuant to Article 58 (1) of the Trademark Act from another applicant for using the same or similar trademark as the applicant's applied trademark on the same or similar designated good, the relevant application ⑤ When an applicant for trademark registration receives an objection from another trademark holder in relation to the trademark registration application. ⑥ In the case where an application is filed as the basis of an international application pursuant to the Madrid Protocol of Article 167 of the 「Trademark Act」, and the international registration date or subsequent designation date pursuant to the Madrid Protocol is registered in the International Register, the relevant application ⑦ When a corporation jointly established by small and medium-sized businesses pursuant to Article 9-2 (1) 2 of the Procurement Business Act applies for a collective mark. ⑧ If an application is filed as the basis for a priority claim under a treaty, and procedures for an application with a priority claim are in progress at a foreign patent agency, the relevant application ⑨ In the case where the trademark right holder of a registered trademark that has expired due to expiration of its duration has filed an application and the mark and designated goods are entirely identical to the mark and designated goods of the registered trademark that has expired due to the expiration of its duration, the application shall be filed. |
Proof material corresponding to the reason
- When it is clear that the applicant for trademark registration is using or preparing to use the trademark for which he or she applied for trademark registration for all designated goods.
Category | supporting data |
| Fact of trademark use | Materials that fall under any of the following: ① A photo of a product with a trademark (a photo of a service with a trademark on it) ② Advertising leaflets, pamphlets, videos, or Internet sites containing trademarked products (or advertising leaflets, pamphlets, videos, or Internet sites related to services displaying trademarks) ③ Other data that can prove that the applicant is using the trademark for designated goods |
| Preparations for trademark use | ① Documents proving that an order has been placed with a printing company to print a trademark to be used for a designated good ② Documents proving that catalogs, pamphlets, advertisements, etc. for designated goods with trademarks attached have been ordered from a printing company or advertising company. ③ Other data that can prove that the applicant is clearly preparing to use the trademark for the designated good |
- When it is recognized that a person other than the applicant is using the applied trademark for business purposes without justifiable grounds.
The fact that one of the above cases applies and the fact that the trademark has been used by a third party, including the third party's name, address (residence), and products related to use, must be specifically stated.
| Category | supporting data |
| In case of warning to a third party | Documents that can prove that a warning about trademark use has been issued to a third party, such as a content-certified mail |
| Prohibition of use of trademark by third parties When requesting a provisional injunction | Documents that can prove the fact of requesting a preliminary injunction, such as a certificate confirming that proceedings are pending |
| Other cases in which a third party uses an identical or similar trademark in the course of business without legitimate grounds | ① A photo of a product with a trademark (a photo of a service with a trademark on it) ② Advertising leaflets, pamphlets, videos, or Internet sites containing trademarked products (or advertising leaflets, pamphlets, videos, or Internet sites related to services displaying trademarks) ③ Other data that can prove that a third party is using the same or similar trademark as the applied trademark for the designated good applied for by the applicant. |
This article reflects the information available when it was published. Contact us to discuss your circumstances.