Rejection 2023-020071 (JP Appl. No. 2023-042056)

  – The applied mark “saladpaper” (standard characters) consists of the words “salad” and “paper.” Further, “salad” means “a dish made primarily from raw or cooked vegetables, sometimes with the addition of meat, seafood, eggs, etc., and dressed with dressing or mayonnaise.” Furthermore, ‘paper’ means “paper, especially Western-style paper.” Additionally, the Examiner has recognized that the industry dealing the designated goods of the trademark application, the wording “saladpaper” is actually used in the industry dealing the designated goods of the trademark application, when providing “paper containers for salad.”

  Therefore, the Examiner refused the registration of the trademark application for “saladpaper” on the ground that the applied mark is merely a description of the quality or intended use of the goods in a manner commonly used, and thus lacks distinctiveness.

  However, the trial Examiners for the appeal have judged that the Examiner’s judgement is incorrect.  That is, the trial Examiners for the appeal have judged that the applied mark has enough distinctiveness.

December 11, 2024

KYODO PAPER HOLDINGS

(Applied Mark: JP Appl. No. 2023-042056)

(Transliteration of “saladpaper” in Japanese Katakana, standard characters)

Industrial packaging containers of paper in Class 16.

  Since all characters of the applied mark are placed in the same font, same size, and same spacing, the trademark application “saladpaper” (standard characters) is a cohesive and integrated sequence of characters and is a coined word not listed in Japanese dictionaries or other reference materials.

　In the industry dealing the designated goods of the applied mark, there are examples where the wording “salad paper bowl” is commonly used to indicate the shape, purpose, or quality of the goods. However, these facts are never sufficient to conclude that the applied mark “saladpaper,” which has a different composition of characters than “salad paper bowl”, is merely an indication of the quality of the goods.

  Furthermore, no facts were discovered indicating that the wording “saladpaper” itself is commonly used in trade to directly or specifically indicate the quality or other characteristics of the goods.

  Therefore, the applied mark “saladpaper” is not likely to cause those dealing with the designated goods of “Industrial packaging containers of paper,” to understand the meaning of “paper containers for salad” as stated in the provisional refusal notification. Rather, it is likely to be recognized and understood as a coined word without a specific meaning, and thus it is deemed to possess enough distinctiveness.

  The key point of the claim in the appeal brief would be that the websites cited by the examiner in the provisional refusal notification were all related to “salad paper bowls,” and pointed out that no evidence was found that the wording “saladpaper” in the applied mark was used to mean “paper containers for salad”. As a result of this claim in the appeal brief being successful, the Examiner’s judgement in the provisional refusal notification was deemed incorrect, and the applicant’s request was granted by the trial Examiners for the appeal.