Appeal decision report (JYACK╲Stripe) | ONDA TECHNO Intl. Patent Attys.[Japan Patent Firm] | Gifu City

Appeal decision report (JYACK╲Stripe) | ONDA TECHNO Intl. Patent Attys.[Japan Patent Firm] | Gifu City

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Appeal decision report (JYACK╲Stripe)

December 1, 2020
Noriko Yashiro

Appeal number Rejection 2020-8295 (JP Appl. No. 2018-146129)
Case summary “JYACK╲Stripe” is allowed to be registered because “JYACK╲Stripe” and cited trademarks “STRIPE” and “Stripe” are considered dissimilar.
Date of decision October 28, 2020
Demandant (Applicant) Niigata Seiki Co., Ltd.
Trademark(s)

Applied-for-trademark

Cited trademark 1

Cited trademark 2

Designated Goods and Class(es)

Designated Goods and Class of applied-for-trademark:

Tape measures; measuring rules; other measuring or testing machines and instruments in class 9

Rulers for stationery and office use; other stationery; drawing instruments in class 16

Judgement

The applied-for-trademark consists of the letters ”JYACK” in the upper portion and “Stripe” in the lower portion. In some ways, the characters of “JYACK” and “Stripe” seem to be distinct from each other. The cursive characters that form “Stripe” are larger than the block characters that form “JYACK” and the word “Stripe” is aligned diagonally from the lower left to the upper right.  

However, there are also indicators that the words “JYACK” and “Stripe” in the applied-for-trademark should be considered together. For example, the words “JYACK” and “Stripe” are approximately aligned (on the left side), are disposed close to one another, and have a cohesive character type. Considering this, “JYACK” and “Stripe” can be considered as a whole in appearance. In addition, the pronunciation of“JYACK╲Stripe” corresponding to whole “JYACK” and “Stripe” is not redundant and can be easily pronounced in a single breath. With the above composition and the pronunciation of the trademark in mind, it is reasonable to say that dealers and consumers would recognize the applied-for-trademark indivisible as a whole.  

In addition, the appeal examiners did not find that the portion “Stripe” of the applied-for-trademark is solely recognized in fields of the designated goods through ex-officio searches. 

Thus, the appeal examiners determined that the refusal decision in the examination stage should be withdrawn because the decision concluded that the applied-for-trademark and the cited trademarks are similar by extracting the portion “Stripe” of the applied-for-trademark and comparing similarities of the trademarks.

Comments

The following seven trademarks were cited in the office action in the examination stage:

1.
2.
3.
4.
5.
6.
7.

The citations of the above 3. and 4. were overcome by deleting the conflicting goods of the applied-for-trademark.
The citations of the above 1., 2. and 6. were overcome by contending dissimilarity in an argument.
Thus, only and were cited in the refusal decision in the examination stage.