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Q15. If a trademark applicant receives an Office Action citing a registered trademark, what measures can the applicant take?

Q15. If a trademark applicant receives an Office Action citing a registered trademark, what measures can the applicant take?

A15. There are four measures:
(1)Filing an argument stating that the applicant’s trademark is not similar to the cited trademark and/or the designated goods or services are not similar to those of the cited trademark.
(2)Filing an amendment to delete the goods or services in conflict with those of the cited trademark.
(3)Filing a non-use cancellation trial against the cited registered trademark. (Please note that the cited registered trademark will be cancelled unless the owner of the cited registered trademark proves that the cited registered trademark has been used in connection with at least one of the designated goods in Japan within a period of three years prior to the filing of the cancellation trial.)
(4)Negotiating with the owner of the cited registered trademark to have the cited trademark assigned. (It should be noted that the Office Action cannot be overcome by merely filing a Letter of Consent executed by the owner of the cited trademark. To overcome the refusal, the assignment has to be registered with the Patent Office.)