There is no likelihood of confusion between the applied-for-trademark “Pilates Studio the SILK” and the cited trademark “SILK” in connection with identical/similar services because it is easy to distinguish the applied-for-trademark from the cited trademark in appearance and sound, and because one is unlikely to confuse the applied-for-trademark with the cited trademark in meaning. With the above in mind, the applied-for-trademark is not similar to the cited trademark.

August 29, 2023

Applied-for-trademark: Pilates Studio the SILK (Standard characters)
Cited trademark: SILK (Standard characters)

Designated services of applied-for-trademark: Educational and instruction services relating to arts, crafts, sports or general knowledge; in class 41, and others.

Designated goods and services of cited trademark: Educational and instruction services relating to arts, crafts, sports or general knowledge and providing information therefor; in class 41, and others.

(1) Applied-for-trademark:

The applied-for-trademark consists of letter string “Pilates Studio the SILK” in standard characters coherently because the letters are indicated in the same size and typeface and because a space corresponding to one letter is placed between each word.

As for the elements, “Pilates” means “Pilates (physical exercise for stretching and improving flexibility)”, “Studio” means “a studio; dance classes [practice space]”, “the” is a plain word known as a definite article in English, and “SILK” is a word meaning “silk” in English. Thus, the applied-for-trademark is associated with a name of a Pilates studio “the SILK” as a whole. However, a specific meaning is not perceived from the applied-for-trademark.

With the above in mind, the applied-for-trademark may have sounds “Pilates Studio the SILK” or “the SILK”. However, it does not have any specific meaning.

(2) Cited trademark:

The cited trademark consists of letter string “SILK” in standard characters. “SILK” is a word meaning “silk” in English, as discussed.

With the above in mind, the cited trademark has a sound “silk” and a meaning “silk”.

(3) Similarity/dissimilarity of Applied-for-trademark and Cited trademark:

Comparing the applied-for-trademark and the cited trademark, it is easy to distinguish the applied-for-trademark from the cited trademark in appearance because it is possible to understand that both trademarks indicate different words as a whole on account of differences of composing elements other than “SILK”, though both trademarks have “SILK” in common. In addition, it is easy to distinguish the applied-for-trademark from the cited trademark in sound because there is a difference “Pilates Studio the” or “the” in initial sounds, though both trademarks have “SILK” in common. Furthermore, one is unlikely to confuse the applied-for-trademark with the cited trademark in meaning on account of differences in mental impressions from both trademarks because the applied-for-trademark does not have any specific meaning, though the cited trademark has a meaning “silk”.

Thus, there is no likelihood of confusion between the applied-for-trademark and the cited trademark in connection with identical/similar services because it is easy to distinguish the applied-for-trademark from the cited trademark in appearance and sound, and because one is unlikely to confuse the applied-for-trademark with the cited trademark in meaning. With the above in mind, the applied-for-trademark is not similar to the cited trademark.

(4) Conclusion

As discussed, the applied-for-trademark “Pilates Studio the SILK” is not similar to the cited trademark “SILK”. Thus, the applied-for-trademark should be registered without need to compare the designated services.

The applicant recited the following co-existing registered trademarks in their argument and appeal to show that they were considered dissimilar and accepted due to a difference of “Studio” or “Pilates” even though the remaining portions were the same in letter strings, regardless of a similarity of designated services:

– “STARTUP” and “Startup Studio”;
– “SAMURAI” and “SAMURAI STUDIO”;
– “LUMINOUS” and “LUMINOUS STUDIO”;
– “MAGMA” and “MAGMA PILATES”;
– “MIRROR” and “Pilates Mirror”; and others.