Big Boss and Queen of Christmas, Nippon-Ham, Shinjo’s “big boss” can’t be trademarked?

There was a Twitter post about “BIG BOSS”, in which the Nippon-Ham baseball team might not be able to register a trademark for the nickname of the managerm, Mr. Shinjo.
It seems that someone unrelated to the team is trying to trademark “BIG BOSS”. If it is registered, does that mean that Nippon Ham will not be able to use “BIG BOSS”?

Generally speaking, the holder of a trademark obtains the exclusive right to use the trademark for the goods and services designated. However, I checked the JPO database and it seems that the third party’s application will not be registered.

What do you mean? What did you find out by accessing the JPO database?

Call me Big Boss!

On November 4, 2021, the Hokkaido Nippon-Ham Fighters, a professional baseball team, held a press conference for their new manager, Tsuyoshi Shinjo.

In the press conference, Shinjo asked the press, “Don’t call me manager. Please call me “Bigboss”.

His comments at the press conference were widely reported in the news, and the keyword “Bigboss” attracted a great deal of attention not only from baseball fans but also from people who are not usually interested in baseball.

This article explains the relationship between keywords and trademark applications, as well as various related issues.

Who owns “Big Boss”?

Trademark Application by Nippon-Ham Baseball Team

On October 11, 2021, six days after the date of the press conference, the Nippon Ham baseball team filed an application with the Japan Patent Office for the trademark “BIG BOSS.
The application covers goods and services such as key chains, stationery, bags, tableware, towels, toys, foods, and alcoholic beverages.

The baseball team may be hoping to take advantage of Shinjo’s popularity and focus on the business of selling related goods bearing the “BIG BOSS” trademark to get a lot of sales.

Trademark application made by a third party

A third party had filed an application for the trademark “BIG BOSS” with the Japan Patent Office on November 8, 2021 for clothing, etc. in Class 25 prior to the team’s application.

Since trademarks are based on the first-to-file principle, i.e., the first to file wins, you would think that the person who filed the application first would be granted the right.

However, this application was rejected based on Article 4.1.7 (violation of public order and morals), 15 (confusion as to the origin of goods or services), and 19 (identical or similar to a well-known trademark of another and used for fraudulent purposes) of the Trademark Law.

The JPO’s decision, as stated in the notice of reasons for refusal, is as follows:

Violation of Article 4.1.7 (violation of public order and morals): Exclusive use of the trademark “BIG BOSS” by a private individual who has no relationship with Nippon-Ham is not socially appropriate and is likely to cause damage to public order or good morals.

Violation of Article 4.1.15 (confusion as to the origin of goods): Use of the trademark “BIG BOSS” on the applicant’s goods may cause confusion as to the origin of the goods, as if the goods were related to the Nippon Ham baseball team in some way.

Violation of Article 4.1.19 (use of another person’s well-known trademark for fraudulent purposes): The application was filed for the purpose of obtaining unfair profits by taking advantage of the fact that the trademark has not yet been registered for the Nippon-Ham Baseball Team and by taking advantage of its notoriety.

In addition, “observation by third party” was provided to this application before the JPO notified the applicant of the reasons for refusal.
It appears that someone has submitted information to the application in an attempt to prevent this trademark from being registered.

Please refer to the following article for more information on the “observation by third party “.

The applicant submitted the argument in response to the reasons for refusal, but the JPO did not accept it, and the application was refused on September 12, 2022.

Even after the baseball team filed the application, several individuals and companies filed applications for the trademark “BIG BOSS” for various products, but all of them were rejected for the same reasons.

Trend Words and Trademark Registration

According to the provisions of the Japanese Trademark Law, even if an unrelated person tries to register a trademark for a keyword that has become a hot topic, such a person will not be granted a trademark registration.

Every year, a ranking of the year’s most popular buzzwords is published, and trend words that appear in the ranking are often registered as trademarks.
Although you may be tempting to use a trend word, you need to be careful when using it in your business, as it may be an infringement of someone’s rights.

Who is Queen of Christmas?

Every year, as Christmas approaches, the streets change to a festive atmosphere and Christmas songs seem to come out of nowhere.
There are many different Christmas songs, but one of the most famous Christmas songs is Mariah Carey’s “All I Want for Christmas is You”.
Many Japanese people have probably heard this song.

Mariah Carey is a very popular singer in her home country of the United States.
In the U.S., Mariah Carey’s Christmas songs are often heard during the Christmas season.

Mariah Carey’s trademark application “QUEEN OF CHRISTMAS”

Mariah Carey’s management office is attempting to register the trademark “QUEEN OF CHRISTMAS” in the United States.
The trademark was filed with the United States Patent and Trademark Office on October 3, 2021 (U.S. Patent Application No. 90571927).

The goods designated in the application include perfumes, musical recordings, jewelry, posters, clothing, Christmas tree ornaments, dog clothing, food, beer, wine, and many others.

Mariah’s trademark application opposed

The U.S. Patent and Trademark Office has completed its examination of the application and has set the opposition period to begin on July 12, 2022.

Opposition is a system whereby the Patent Office releases to the public that it has completed its examination of an application and hears requests from third parties that the trademark application should not be registered.

According to UK’s Daily Mail, another singer has filed an opposition to the “QUEEN OF CHRISTMAS” application with the US Patent and Trademark Office.
The singer’s argument is reportedly that “no one person should be allowed to exclusively use anything related to Christmas.

On November 15, 2022, the U.S. Patent and Trademark Office decided to cancel the trademark application.
Mariah’s failure to respond to the opposition within the time limit resulted in the opposition being granted and the application being cancelled.

Mariah was unable to obtain the “QUEEN OF CHRISTMAS” trademark.

How did she plan to develop her business using the “QUEEN OF CHRISTMAS” trademark?
Would she change her brand strategy in response to this outcome?

However, Mariah’s fans around the world would agree that she is the “Queen of Christmas.

So, Manager Shinjo’s “BIG BOSS” was not granted rights to the third party after all. I’m glad the patent office recognized someone else’s application as a trademark theft.　

Summary

In the case of the “BIG BOSS” trademark application, the Japan Patent Office has decided not to grant rights to a “trademark theft application,” and the Nippon-Ham baseball team will finally be able to obtain trademark right to “BIG BOSS”.

However, this is not always the case.

In many cases, it is difficult to get the Patent Office to recognize an application filed by a third party as a trademark theft.

Our online trademark registration service “Amazing DX” allows you to file a trademark application quickly and cost-effectively, so please take advantage of this service. You can also consult with our patent attorneys.