In this article, we will provide a detailed explanation of the most common scenario in JPO (Japan Patent Office) trademark examinations—where a mark is judged to lack "distinctiveness" (meaning it does not function as a brand identifier)—and discuss practical strategies to address this issue.

The most significant hurdle to achieving trademark registration is often an objection based on Article 3, Paragraph 1, Item 3 of the Trademark Act.

The Ambiguity of Distinctiveness

Generally, during the pre-filing consultation phase with a patent attorney, we advise against filing if a trademark clearly describes only the quality of the goods. However, the presence or absence of distinctiveness is judged on a case-by-case basis. Because interpretations can vary even among JPO examiners, the line between "registrable" and "descriptive" is not always black and white.

In borderline cases, we often proceed with the application; consequently, debating the validity of the examiner’s judgment becomes one of the most critical points in trademark practice.

A Common Example of Refusal

A typical Notification of Reasons for Refusal might look like this:

"The trademark in this application consists of the word 'DRY'. The term 'DRY' is widely used to indicate the taste profile of 'beer.' Therefore, when used for the designated goods 'beer,' it is recognized as merely representing the quality of the product. Accordingly, this trademark falls under Article 3, Paragraph 1, Item 3 of the Trademark Act."

If we determine that the examiner’s judgment is appropriate, the application procedure is usually terminated. Words judged to lack distinctiveness are considered "public words" that should not be monopolized by any specific entity, meaning they remain free for everyone to use.

Strategies for Challenging a Refusal

If the case is nuanced or the examiner’s judgment appears unjustified, we generally contest the refusal using one of the following three methods:

• Challenging the Descriptive Meaning: We argue that the trademark does not convey the "descriptive meaning" identified by the examiner. By citing dictionary definitions and market realities, we demonstrate that average consumers perceive the word as a unique brand name rather than a product description.
• Arguing Lack of General Usage: We argue that the trademark is not commonly used in the industry as a quality indication. However, recent examination trends suggest that even if there is no current use, a mark may be refused if it is deemed a term that "anyone would likely want to use in the future" (potential for use). This strategy requires expert caution.
• Proving Acquired Distinctiveness: Even if a word originally described a product's quality, we can argue that it has gained distinctiveness through long-term, extensive use. If it has become famous nationwide to the point where consumers immediately associate it with a specific company, it may be registered under Article 3, Paragraph 2 of the Trademark Act. Note that this is a highly difficult route requiring a vast amount of evidence to prove nationwide recognition.

Conclusion

Examinations regarding distinctiveness are highly complex and require a strategic approach. If you receive a notification of refusal or are unsure about the distinctiveness of your brand name, consulting with a specialist is essential to navigate these legal hurdles effectively.