What should we be aware of when filing a trademark consisting of words

I have created a catchphrase! I would like to use this catchphrase as a trademark for my service.
By the way, can I apply for a trademark for short words like a catchphrase?

Applications can be filed. However, special attention should be paid to Article 3.1 of the Japanese Trademark Law before filing an application for short words such as catchphrases.

Can words themselves, such as slogans and catch phrases, be registered as trademarks?

In a separate article, we informed you that trademarks falling under Article 3(1)(vi) of the Trademark Law cannot be registered; under the old examination criteria prior to March 2016, it was stipulated that “mottoes (catch phrases, etc.) fall under Article 3(1)(vi) of the Trademark Law,” and catch phrases, etc. were in principle not eligible for trademark registration.

However, in April 2016, the examination criteria for trademark registration of “mottoes” were revised; in the new examination criteria after April 2016, the aforementioned old criteria clearly stated that “mottoes (catch phrases, etc.) fall under Article 3(1)(vi) of the Trademark Law”. However, in the new examination criteria from April 2016 onward, the aforementioned old criteria were deleted. This revision makes it easier to register a motto than before.

On the other hand, the new examination criteria specify when a trademark registration of a motto is not allowed. This article introduces the main points.

*Hereinafter in this article, “trademarks consisting of words themselves, such as slogans and catch phrases” will be referred to as “catch phrase trademarks”.

Requirements for a catchphrase trademark not to be registered (1)

・When recognized as a direct and specific advertisement or promotion of goods or services and not as a source distinguishing mark

1) If the applied-for trademark is recognized by consumers as a direct and specific advertisement of the designated goods or designated services, taking into consideration the association between the concept arising from the trademark as a whole and the designated goods or designated services, the actual state of transactions of the designated goods or services, the overall structure and manner, etc., this issue is applicable.

(2) In judging (1) above, if the applied-for trademark falls under any of the following items, for example, it shall fall under the circumstances where it is deemed to be a promotion or advertisement of goods or services.

(Examples)
(1) When the characteristics or superiority of the goods or services are made known
(ii) where the goods or services are perceived as an inducement to purchase or use the goods or services
(iii) where words identical or similar to the applied-for trademark are generally used in advertising and publicity.

(3) If the applied-for trademark falls under, for example, any of the following items, it will be considered as a circumstance that causes the applicant to recognize the goods or services as those pertaining to the business of some other person, rather than direct and specific advertising of goods or services.
(Example.)

(i) where the applied trademark includes a word that has a function of identifying own or other goods or services, such as a trade name
(ii) where the applied trademark is combined with a figure, etc. which has the function of identifying own and other goods or services
(iii) where the applicant has been using the applied-for trademark for a long period of time
(iv) where a third party is not using the same or similar words as the applicant’s trademark for advertising or publicity purposes.

Requirements for a catchphrase trademark not to be registered (2)

・When the mark is recognized as an expression of the ideals, policies, etc. of a company and is not recognized as a source distinguishing mark, although it has little direct relevance to the goods or services

A trademark falls under this item if the applied-for trademark is generally recognized only as an expression of corporate ideals, policies, etc., taking into consideration the conception arising from the whole, the actual state of transactions, the overall composition and manner, etc.
Specifically, if the applied-for trademark falls under any of the following items, for example, it will be considered as an ideal, policy, etc. of a company.
(Examples)
(1) Where a word identical or similar to the applied-for trademark is commonly used as an expression of corporate ideals, policies, etc.

In addition, if the applied-for trademark falls under, for example, any of the following items, it will be considered not only as a corporate ideal, policy, etc., but also as a circumstance that causes the trademark or service to be recognized as pertaining to the business of a certain person.
(Examples)
(1) Where the applicant’s trademark includes a word that identifies the applicant’s own or other goods or services, such as a trade name.
(2) Where the applicant has been using the applied-for trademark for a long period of time
(iii) Where a third party is not using the same or similar words as the applicant’s trademark as a corporate ideal or policy.

An example of requirement (2) is the company’s corporate message. This is because the corporate message is a phrase used to communicate the company’s concept, philosophy, attitude, and policies to external and internal audiences.

What catchphrase trademarks are registered?

So what is the difference between a catchphrase trademark that is registered and a catchphrase trademark that is not registered? Specifically, what requirements must be met for a catchphrase trademark to be registered?

Based on the above requirements and examples of registered catchphrase trademarks, it appears that trademarks that meet the following requirements tend to be registered

(1) the words of the trademark are recognizable as coined words, etc.
(2) The applicant has been using the trademark as a distinguishing mark for a certain period of time.
(3) No third party is using the trademark.

Examples of registered trademarks

Trademark: 美味日本 (Appeal or trial number：2011-6326, Reg.No.5470695)
Designated goods, category: Class 29 , 30 , 31

This trademark was refused in the substantive examination on the grounds that it falls under Article 3(1)(vi) of the Trademark Law.
However, in a subsequent appeal trial, the original decision was rescinded and the trademark was registered for the following reasons.

1)The characters “美味” and “日本” in the composition are words that have the meaning of “good taste” according to the dictionary. The words also have the meanings of “its food” and “the name of the country of Japan. It is difficult to say that the characters constituting the trademark in the application are immediately identifiable as having the meaning as explained in the original judgment in relation to the designated goods.

2) In the industry handling the designated goods of the applicant’s trademark, no facts were found that the characters of “美味日本” are commonly used in trade by an unspecified number of persons as an advertising phrase or catchphrase for the products.
In that case, the trademark of the application fully fulfills its function as a sign identifying the origin of the goods for its own and other goods in connection with the designated goods.

Indeed, if you search J-platpat, you will find several registered trademarks that are similar to the catchphrase.
I know what the requirements are for registering a trademark for a word. But I don’t know if the catchphrase I came up with will be registered…

The requirements to be recognized as a promotion, advertisement, etc. are clearly defined in the examination criteria. Therefore, it is necessary to create a catchphrase trademark so as not to be caught by those requirements.
Its creation is quite difficult without practical experience. In the meantime, you should consult an expert before doing your own research.

I agree. It’s better to get an expert’s opinion instead of making decisions on your own. I’d feel safer talking to an expert!

Check with our experts to see if you can register your catchphrase trademark!

Creating a catchphrase trademark that meets registration requirements is not an easy task. The registration requirements listed in the Examination Guidelines are only generalities. It is necessary to use words on an individual basis in order to get the Patent Office to recognize that it is not an advertisement or corporate philosophy!

Why don’t you first ask our patent attorneys about the possibility of registering your catchphrase trademark? Please feel free to contact us! If you are planning to use a catchphrase, we recommend that you obtain the rights to your catchphrase as soon as possible before someone else does.

Reference and Source Information