Tomoko Nakajima Japanese Patent and Trademark Attorney 13 October, 2004, Washington D.C.

1. How to Overcome a JP Office Action based upon Citations to Registrations that Cover BROAD Goods/Services in a Class Tomoko Nakajima Japanese Patent and Trademark Attorney 13 October, 2004, Washington D.C.

2. Agenda • Similarity of Goods • Classification • International Classification • Japanese Classification • Similar Group Code • Class Heading • Strategies to Overcome OA

3. Q. Can Z get his TM registered? • Z has a registered Trademark in connection with Gloves. • His main business is Gloves. • Y is thinking to start business of Babies’ diapers • Can Z get his TM registered?

4. Q. Can Y get his TM registered? • X has a registered Trademark in connection with Clothing. • His main business is Men’s wear. • Y is thinking to start business of Babies’ diapers • Can Y get his TM registered?

5. X: Registered Trademark Y: Business X: Business (cont’d) BLUE: Clothing Yellow: Men’s wear business Pink: Babies’ diapers business

6. (cont’d) Clothing Q: Is this description acceptable in Japan? Q: What are included in Clothing? Q: How can I determine if this is similar to my goods? Q: Is this similar to “Babies’ diapers”? Why?

7. Why does this happen? • TM rights in JP are based on registration, rather than use. • Use is not required for registration JAPAN US USE Reg Registration USE

8. Why does this happen? (cont’d) • Description of G/S can be as broad as you want!! • JP Class Heading (very broad) is acceptable. • Similarity of G/S is pre-determined!! • A Myth? Broader is Stronger?

9. How to Determine Similarity • Similarity of trademarks • Appearance • Sounds • Meaning • Similarity of goods/services

10. What does TM Law say? • Classification ≠ G/S “The classes of goods and services referred to in the preceding subsection shall not be determinative of the scope of similarity of goods or services.” Section 6 (3) • Goods ~ Services • “There may exist services in the scope of similarities of goods and there may exist goods in the scope of similarities of services” Section2(5). Goods Services

11. Test of Similar Goods • What is the test of similar goods? (1) Whether they correspond in production stage. (2) Whether they correspond in stage of sales (3) Whether they correspond in materials and quality (4) Whether they correspond in use (5) Whether they correspond in a range of consumers they are targeted at (6) Whether they are in a finished-product-and-parts relationship

12. Test of Similar Services • Whether they correspond in… (1) The manner, purpose and place of their provision. (2) Articles connected with their provision. (3) A range of consumers and customers they are targeted at. (4) The category of their business (5) Laws regulating business relating to the services concerned and their business operators (6) Whether they are provided by business operators in the same category of business

13. Test of Similar Goods & Services (1) Whether it is common for the same business operator to engage in the manufacturing and sales of goods and in the provision of services (2) Whether the goods and services correspond in use (3) Whether the goods and services correspond in the points of sales of the goods and provision of the services are identical (4) Whether the goods and services correspond in a range of consumers and customers they are targeted at

14. What Classification does JP use? April 1, 1992 International Classification!!

15. Classification (cont’d) How to examine similarity of G/S JP Original Classification International Classification April 1, 1992 = JP Original Classification Similar Group Code

16. What is “Similar Group Code”? • Similar goods and services were given the same “similar group code” e.g. “Chemicals” in Class 1 = 01A01 “Electric machines and instruments and their parts and fittings = 11C01 • Announced officially in “Examination Guidelines…” ~ TMEP 1400

17. Advantages • Easy to … • Find similar marks when searching in multiple classes • Never refused on grounds of indefinite description requirement • Quick and efficient Examination • No need to list all goods you want • Predict the scope of TM right

18. Similarityv.Likelihood of Confusion identical • After Registration • Examination ? LIKELIHOOD of CONFUSION SIMILARITY = identical

19. Advantage: Easy to find similar marks in multiple classes • Cases where the designated goods under the old JP classification fall under multiple classes of the current classification depending on the type of use, material, etc. ---JP Classification--- ---International Classification--- • Class 1: glue → Class 1: glue (excluding those for office or home use) << 01A02 >> → Class 16: glue for office or home use • Class 19: mailbox → Class 6: metal mailbox << 19B35 >> → Class 19: stone mailbox → Class 20: mailbox (excluding those made of metal or stone)

20. X: Registered Trademark Y: Business X: Business Disadvantage BLUE: Clothing Electric machines and instruments and their parts and fittings Yellow: Men’s wear business Pink: Babies’ diapers business

21. Disadvantage (cont’d) • Clothing --- Class 25 17A01, 17A02, 17A03, 17A04 and 17A07 • 17A04 in Class 25: Aprons, Hosiery (socks), Gaiters, Stoles of fur, Shawls, Scarves, Gloves, Neckties, Mufflers, Babies’ diapers of textile, • 17A04 in other classes • IC5: Incontinent diapers • IC9: Protective Gloves • IC16: Babies’ diapers of paper • IC17: Insulating gloves • IC21: Gloves for household purposes

22. Disadvantage (cont’d) • Much broader description used to be acceptable under the JP classification • “XYZ and all the rest in the class” • Those registered marks still exist. • Changes • Not allowed anymore (but still JP class heading is okay) • Reclassification

23. How to Overcome OA • Invalidating the opposing Trademark (1) Invalidation (2) Cancellation based on 3 year non-use • Negotiation with the party (3) Request for abandonment of conflicting goods (4) Assignment of conflicting goods • No Consent System

24. Cancellation • Search for the possibility of non-use • Professional search v. Internet search • Requirement • Three year non-use by any of TM owner, Licensee • Any person can demand it! • With respect to each non-use G/S

25. Cancellation…Tips (cont’d) • Timing to contact the non-use TM owner contact? contact? demand • Use within 3 months before the demand after knowing that the cancellation will be demanded is NOT deemed as “use” • The range of G/S to request Cancellation • Not enough the range of G/S stated in OA Three year non-use

26. X: Registered Trademark Z: Business X: Business Request for abandonment or assignment of the conflicting G/S • Which portion should be requested?

27. Assignment • As an Assignee Ask X to assign the overlapping portion to you • As an Assignor Ask X to be your Surrogate Mom. (Ask X to register your trademark under X’s name and once registered, ask them to assign you again.) - Is this OK???

28. No Consent System…so far • Plan to adopt Consent System soon!! • Identical TM: No Consent • Similar TM: • Examination of Consent by Examiner v. Rubber Stamp? • No Money Consideration? • Consent Info in Publication?

29. Conclusion • Invalidation • Cancellation based on 3 year non-use • Negotiation with the party • Request for abandonment of conflicting portion • Assignment of conflicting portion Note: Similar Group Code is Key • Consent System will be available soon

30. Thank you! Tomoko Nakajima JP Trademark and Patent Attorney 202-822-1117 tnakajima@WHDApatentlaw.com nakajima@MIYOSHIpat.co.jp