LEADING JAPAN IP SERVICES FOR 20 YEARS
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+81-3-3230-1244
Philadelphia
215-701-6349
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Responding To Madrid System Office Action in Japan
The Madrid System Provisional Rejection from the JPO that you received from WIPO is a first office action issued by the JPO. You are given a 3 month deadline to respond. We make seeking help not only easy but also affordable. For a single flat rate, a trademark Office action attorney from our firm can help minimize the stress of the trademark process and make sure you are in the best position to be approved for registration!
 ★ Most Popular ★
Response to Simple Description Issue
 $400*
  • Timely responding to the Office Action
  • Filing an Amendment 
  • Single issue - Description of Goods or Services
Response to Two or More Issues
$600*
  • Timely responding to the Office Action
  • Filing an Amendment
  •  Submitting Documents
  • Two or more issues - Description of Goods or Services; Reasonable Doubt as to Use of the Trademark on the Goods or Services; Amending Good or Services for Merely Descriptive; Amending Goods or Services for likelihood of Confusion 
Response to Complicated Issues
US$900
~US$1800*
  • Timely responding to the Office Action
  •  Filing an Amendment
  •  Submitting Documents
  •   Filing an Argument
  • Includes Trademark Office Actions - Make an argument based on Merely Descriptive; Make an argument based on Merely a Surname; Make an argument based on Likelihood of Confusion; File a Cancellation Trial based on Likelihood of Confusion**
*  For the case the fee paid by Credit Card otherwise $200 will be added
** JPO fee of $550 per international class would be incurred.
CONTACT US
Responding to Madrid System Rejections in Japan
* we respect your privacy - will not be sold, rent, or leased *
Five Essential Points Your Should Know
You received a Notification of the Provisional Refusal issued by the Japan
Patent Office. Are you searching for a local representative to file a
response to the Provisional Refusal? The followings are the five points to be noted.
1. Deadline may be Extended up to 3 months.
The deadline is three months to file a response from the date of pronouncement.
Please look at the bottom on the first page of the Notification of
Provisional Refusal. There you will find the date of pronouncement.
If you request a one-month-extension before the deadline, you will be able to request additional two-month-extension later. If the deadline has passed, you will be able to file a response within two months from the deadline. In this situation, no further extension is permitted beyond the two months.
2. Original Power of Attorney is Required.
An original signed Power of Attorney is required to be submitted for filing a response. 

3. How to Read the Provisional Refusal.
Please look at the Column V. on the second page of the
Notification of Provisional Refusal. The Grounds of Refusal are
explained in this column. 
You usually find the suggestions by the JPO Examiner at the Column VI. 
If you accept the suggested
description, you could amend the goods or services accordingly.
If the suggested description would not be appropriate, you could
provide us with your alternative description of goods or services.
We would examine if your amendment would be admitted by the
JPO. We would also contact the JPO examiner and discuss the
appropriate description if necessary.

4. The Second Part of Payment is Required in Japan.
After the reasons for rejection are overcome and the JPO issues
the Decision to Grant a Trademark Registration, you must directly 
file the second part of payment with the WIPO.
The due date for paying the second part of payment is three months 
from the transmission date indicated on the Statement of Grant of
Protection.
If you miss the deadline, you have a two months grace period
to pay to revive the trademark application. In such a case, you
must file Form MM20 and a fees of 200 Swiss Francs,
in addition to the amount of the second payment.

5. Certificate of Registration is Issued Only Once.
The JPO would issue the Certificate of Registration only once.
They never issue the Certificate again. Thus, please have the Certificate 
stored securely.
About Keisen Associates
No matter how highly developed the media of communication have become, time, language, and cultural barriers still can hinder protection of intellectual property in other countries. This is true for Japan as well as for anywhere else. Applicants can run into problems when communicating directly with Japanese legal counsel and evaluating work done in Japan due to the language barrier, for example. They may also encounter inconsistencies in slow response time, and high communication costs.

The Kéisén Advantage

In answer to these issues, Keisen’s predecessor, Omori & Yaguchi, founded Omori & Yaguchi U.S.A. in Philadelphia in 2000, achieving several strategic advantages. Our Philadelphia office houses registered Japanese patent attorneys, U.S. patent attorneys, and U.S. patent agents. Located in the Eastern U.S. and with many bilingual staff members, we are able to meet regularly with our clients, even in person, to discuss their problems and IP strategies in English, which is crucial for creating high-quality documents for Japan. Our lawyers have intimate knowledge of the Japanese IP business and can assist personally with legal aspects of developing a market strategy for Japan, including licensing, franchising, and other matters related to intellectual property rights. The Tokyo and Philadelphia offices cooperate to serve our clients’ IP prosecution and litigation needs around the clock. In order to facilitate effective communication between our two offices, we conduct television conferences and even frequently fly staff between the offices.
WHERE WE ARE
TOKYO (JAPAN)

Keisen Associates
Waterras Annex, Suite #1205
2-105 Kanda-Awajicho, Chiyodaku
Tokyo 101-0063 JAPAN
Tel: +81-3-5298-6552 Fax: +81-3-5294-3008


PHILADELPHIA (US)

Keisen Associates (Omori & Yaguchi USA LLC DBA Keisen Associates)
8 Penn Center, Suite 1100
1628 John F. Kennedy Blvd.
Philadelphia, PA 19103, USA
TEL: +1-215-701-6349
FAX: +1-215-751-0192
WHAT PEOPLE ARE SAYING

Roger Herrell, Partner, Dann, Dorfman, Herrell & Skillman

“I have found your firm to be very responsive. When needing information and help relative to Japanese practice, I have received courteous and knowledgable responses which have permitted me to effectively represent my clients.”

Wendy Choi, Partner, Ballard Spahr, LLP

“We often need to provide foreign filing instructions in the eleventh hour. Keisen has always been accommodating to our last minute needs and has done a wonderful job. Keisen has also been especially kind in our efforts to market in Japan.”
More Questions? We offer a free consultation!
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