Rejection 2025-009375 (JP Appl. No. 2024-052946)

  – The applied trademark “PLAIN ROOF” (standard characters) consists of a first part comprising the letters “PLAIN” meaning “simple; unadorned”, and a second part comprising the letters “ROOF” meaning “roof”. Additionally, in the industry dealing with the designated goods of this trademark application, the letters “” (a transliteration of “PLAIN” into Japanese Katakana characters) and the letters “” (a transliteration of “ROOF” into Japanese Katakana characters), are commonly used to indicate, respectively, a simple/unadorned design and roof-related goods such as roofing materials.

  Therefore, the Examiner refused the registration of the trademark application for “PLAIN ROOF” on the ground that the applied mark is merely a description of the quality of the goods “products related to plain (design) roofs”, 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 sufficient distinctiveness.

December 18, 2025

(Applied Mark: JP Appl. No. 2024-052946)
PLAIN ROOF
(Standard Characters)

  “metal materials for building or construction; prefabricated building assembly kits of metal; etc.” in Class 6.

  “linoleum building materials; plastic building materials; synthetic building materials; buildings, not of metal; etc.” in Class 19.

  Even if the applied trademark “PLAIN ROOF” (standard characters) consists of a first part comprising the letters “PLAIN” meaning “simple”, and a second part comprising the letters “ROOF” meaning “roof”, no facts were discovered indicating that traders or consumers dealing with the designated goods of the applied-for mark would perceive the mark as a descriptive indication of product quality of “products related to plain (design) roofs”, as judged in the refusal decision.

  Therefore, the applied mark “PLAIN ROOF” cannot be deemed to consist solely of a mark indicating the quality of the goods in a manner commonly used as prescribed in Japanese Trademark Law Article 3(1)(iii), in relation to the designated goods, nor can it be deemed likely to cause confusion regarding the quality of the goods as prescribed in Japanese Trademark Law Article 4(1)(xvi).

  The applicant claimed in the appeal brief as follows:

  – The meaning of “products related to plain (design) roofs” which was indicated in the refusal decision can be understood in relation to various elements such as patterns, designs, or even shapes, and thus it is too abstract and too vague to establish a specific relationship to the goods designated in this application.

  – Therefore, the applied-for trademark merely indicates the quality or characteristics of the goods indirectly or suggestively.

  – Accordingly, the applied-for trademark should be judged to possess sufficient distinctiveness to distinguish the goods of the applicant from those of others as a whole.

  As a result of these claims in the appeal brief being successful, the Examiner’s judgement in the refusal decision was deemed incorrect, and the applicant’s request was granted by the trial Examiners for the appeal.