Rejection 2022-21178 (JP Appl. No. 2020-161762)

The Examiner has judged that the applied mark  is written in cursive script, which is a common manner.

Further, the Examiner has judged that typical consumers will most likely recognize “Off White” as the English word for a color name.

Furthermore, the Examiner has judged that “Off White” is a commonly used color name for various products.

Therefore, the Examiner has issued a decision of refusal against the trademark application on the grounds that  does not have sufficient distinctiveness for the designated goods.

However, the appeal trial Examiners have judged that the Examiner’s judgement is incorrect, concluding that the applied mark possesses sufficient distinctiveness for the designated goods.

October 24, 2023

 the applied mark (JP Appl. No. 2020-161762)

(Applied Mark: JP Appl. No. 2020-161762)
  Cosmetics etc. in Class 3.
  Safety helmets etc. in Class 9.
  Handbags etc. in Class 18.
  Drinking cups etc. in Class 21.

The applied mark is written in “a characteristic typeface as a whole.”  Thus, the applied mark is not written in a common manner.
Therefore, the applied mark has sufficient distinctiveness to be recognized as distinct.
In view of the above, the appeal trial Examiners have withdrawn the Examiner’s judgement, namely, the decision of refusal against the applied mark.

For an applied mark consisting of alphabetical characters written in cursive script, if the design level of such script is quite high (that is, if it is difficult to recognize that the script consists of alphabetical characters), the JPO has traditionally handled the script as a kind of figure.

We think that it is difficult to recognize as “Off White.”  Thus, we believe that the JPO should handle  as a kind of figure.

However, we feel that the Examiner’s criteria for the distinctive might be higher than before.  Therefore, even if the applied mark is written in cursive English script, Examiners are unlikely to recognize its distinctiveness if the word in a usual font lacks distinctiveness.  Thus, to overcome the decision of refusal, we expect that many applicants will have to file a request for a trial against the refusal in the future.