Appeal decision report (POP DOT) | ONDA TECHNO Intl. Patent Attys.[Japan Patent Firm] | Gifu City

Appeal decision report (POP DOT) | ONDA TECHNO Intl. Patent Attys.[Japan Patent Firm] | Gifu City

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Appeal decision report (POP DOT)

September 29, 2020
Noriko Yashiro

Appeal number Rejection 2020-7381 (JP Appl. No. 2019-6506)
Case summary Trademark “POP DOT” is allowed to be registered because it does not consist solely of a mark indicating, in a common manner, quality and other such characteristics and because it is not likely to mislead as to quality of the goods.
Date of decision September 7, 2020
Demandant (Applicant) Target Brands, Inc.
Trademark(s)

POP DOT (Standard characters)

Designated Goods and Class(es) Hair straighteners, electric; hair curling irons, electric; curling irons, non-electric; and hair trimmers, electric in class 8
Judgement

The appeal examiners did not find that “POP DOT” or “POP DOT (in katakana)” has been used to show a polka dot characteristic and that “POP DOT” or “POP DOT (in katakana)” would be considered “polka-dot goods” and that dealers and consumers would recognize “POP DOT” or “POP DOT (in katakana)” as indication of quality and other such characteristics in fields of the designated goods through ex-officio searches.

With the above in mind, it is unreasonable that the applied-for trademark would indicate quality and other such characteristics or likely mislead as to quality of the goods in connection with the designated goods.

Comments

The applicant filed three trademark applications for POP DOT (standard characters) on the same day in Japan. Office actions were issued for the three applications with some common reasoning for rejection (described below).

The examiner in the examination stage considered that the applied-for trademark would be recognized as only “polka-dot goods” by dealers and consumers and that the applied-for trademark consists solely of a mark indicating, in a common manner, quality and other such characteristics because the portion “POP” of the applied-for trademark means “popular” and because the portion “DOT” means “polka dot” and because “POP DOT” or “POP DOT (in katakana)” has been used to show one of polka dots in fields of various goods including the designated goods. Thus, the examiner determined that the applied-for trademark would likely be considered as a trademark consisting solely of a mark indicating, in a common manner, quality and other such characteristics with regard to “polka-dot goods” or a trademark misleading as to quality of the goods with regard to other than “polka-dot goods,” and rejected the application.

For one of the three applications, an argument against the office actions was accepted.

As for the remaining applications, arguments were not accepted and final decisions of refusal were issued. The applicant deleted many of the designated goods and filed appeals against the decisions in the remaining applications. Arguments in the appeal stage were accepted (see judgement above) and decisions in favor of the applicant were issued for the remaining applications.