American Intellectual Property Law Association
Registration of Non-Traditional Trademarks in the
United States and Japan – Are they compatible?
George W. Lewis（ジョージ・ルイス）米国弁護士
服部 健一 米国弁護士
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AIPLA1
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What is a Registrable Trademark under U.S.
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“any word, name, symbol, or device, or any combination
thereof . . .
used by a person . . .
to identify and distinguish his goods, including a unique
product, from those manufactured or sold by others and to
indicate the source of the goods, . . .” (15 U.S.C. § 1127)
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AIPLA2
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The Broad Scope of Registrability
•
“[T]he language of the Lanham Act describes [the
universe of things that can qualify as a trademark] in
the broadest of terms . . . since human beings might
use as a ‘symbol’ or ‘device’ almost anything at all
that is capable of carrying meaning, this language,
read literally is not restrictive.” ― Qualitex v.
Jacobson Prods. Co., 514 U.S. 159, 115 S. Ct. 1300
(1995)
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AIPLA3
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The Basic Standard for Registration of Trade Dress as a
Trademark
Trade dress is registrable if the matter
sought to be registered is:
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(1)
(2)
inherently distinctive or has acquired
distinctiveness; and
is not functional.
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INHERENT DISTINCITVENESS
Three following factors are to be considered in
assessing a package design whether the designs at
issue are inherently distinctive:

(1)
whether the packaging is a common basic shape or
design;
(1)
whether it is unique or unusual in the particular field, and
(1)
whether it is a mere refinement of a commonly-adopted
and well-known form of ornamentation for a particular
class of goods viewed by the public as a dress or
ornamentation for the goods.
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ACQUIRED DISTINCTIVENESS LITIGATION
•
Acquired distinctiveness (also
referred to as secondary meaning)
requires proof that the consuming
public associates the mark with a
single source.
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FEATURE, IF FUNCTIONAL ≠ TRADEMARK
特徴が機能的であると商標にならない
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A feature is functional if it:
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is essential to the use or purpose of the
product, or
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it affects the cost or quality of the product
and would put competitors at a significant
non-reputation related disadvantage.
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AIPLA7
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Color Mark
Registered
Mark
App. No. 2015-29938
Goods
Non-alcoholic Energy Supplying
Beverages (Class 32)
Applicant
Red Bull Aktiengesellschaft
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http://energydrink-jp.redbull.com/
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Color Mark
Not Registered
Mark
App. No. 2015-30037
Services
Retail Services (Class 35)
Applicant
Seven-Eleven Japan
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http://www.sej.co.jp/sej_case/area/akita/int_yokotesannokuchi.html
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EXAMPLES OF NON-TRADITIONAL MARKS: 非伝統的マークの例
Single Color as applied to the goods, Tiffany and Company
ティファニーの箱
“The mark consists of a particular shade of
green-gold applied to the top and side
surfaces of the goods. The representation
of the goods shown in phantom lining not a
part of the mark and serves only to indicate
position. The drawing is lined for the color
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gold.”
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Current Pending Application – Description of the mark: The mark
consists of a border around the lid of a container.
DRAWING
SPECIMEN
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CURRENT PENDING ITU APPLICATION CLAIMIMG COLOR - ALLOWED
DRAWING
DESCRIPTION IF THE
MARK
• The color(s) red, yellow,
orange, blue, purple,
green is/are claimed as a
feature of the mark. The
mark consists of an
upside down rainbow in
red, orange, yellow,
green, blue and purple.
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The Application was rejected because the mark was an ornamental design and
because the mark of the drawing and the specimen are different.
Drawing submitted with ITU
application
Specimen submitted with
the Statement of Use
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Is this registrable in JPO? IS it registrable under U.S.
law” What is the actual mark of the Application
Allowed Pending ITU Application Serial No.
86487727 for GUM
• DESCRIPTION OF
MARK:
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The mark consists of A circularshaped shield with a line
dividing the shield in half and a
sparkle on the upper right half.
•
Will likely be rejected when the
Statement of Use is submitted
because issue related to use
are not examined until the
Statement of Use is submitted
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© AIPLA
2015
AIPLA
The Application was rejected because the mark of the drawing and the
specimen are different.
Drawing submitted with the
application
Specimen submitted with
the Statement of Use
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Sound Mark
Registered
Mark Reg. No. 5805757
This trademark consists of a person’s voice saying “O-i Ocha
(“Hi, tea”)”, and is four seconds long.
Goods
Registrant
Tea, Tea Drinks
Ito En
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https://www.itoen.co.jp/oiocha/cm.html
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SOUND MARK in the U.S.
• A sound mark identifies and distinguishes a product or
service through audio rather than visual means. Sound
marks function as source indicators when they “assume a
definitive shape or arrangement” and “create in the hearer’s
mind an association of the sound” with a good or service.
• Specimen - applicant must submit a specimen that contains
a sufficient portion of the audio or video content to show
how the mark is used on or in connection with the
goods/services/collective membership organization.
• The SOUND MARK must be affixed to the goods. Us in
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advertising
i.e. an advertising jingle – will not likely qualify.
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Hologram Mark
Registered
Mark
Reg. No. 5804315
Services
The Issuance of Gift
Cards and the
Provision of Information
Relating Thereto (Class
36)
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Applicant
http://v.vpass.ne.jp/premiumgift/contents/top/
Sumitomo Mitsui Card
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Holograms
• Not Registrable
• Drawing Must Show Only One Mark.
– Differs from a three-dimensional mark and drawing –
that is one drawing one mark.
– Multiple drawings would be required to properly and fully
display hologram and that would appear to violate rule
of one application one mark
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Thanks for your attention! Questions?

George W. Lewis, Esq.
 Westerman, Hattori,
Daniels & Adrian

Glewis@WHDA.com
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