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Bottom line: The Board held that “ENERGY DESIGN” is not an inherently distinctive mark for building and housing services in Classes 36 and 37.

The applicant, MISAWA HOMES CO., LTD. filed a trademark application for a word mark “ENERGY DESIGN” in Classes 36 and 37, for services relating to building and housing.  The Examiner refused the mark as being merely descriptive for the designated services because the term “energy design” is used to refer to energy-resource-friendly design in the construction industry (Section 3-1-3 of Trademark Act).

The Board had a slightly different opinion and refused the mark because it does not serve as a source identifier (Section 3-1-6 of Trademark Act).  The Board referred to the materials provided by the examiner as well as other newspaper articles and references, and found that:

-　The term “energy design” is a concept used in the construction industry referring to the design that is conscious about energy resource and efficient use thereof;
-　When used for the designated services, the consumer will recognize that it merely indicates the ideal or policy of the services;
-　Thus, the mark is not capable of distinguishing the origin of services.

The applicant made an argument that: 1) the term is notional and abstract, thus the consumer will recognize it as a fancy term of some sort; 2) the applicant uses the mark extensively to the extent that the consumer will recognize the applied-for mark as a source identifier; 3) existence of registration for various slogan marks indicates that the applied-for mark is capable of being a source identifier.  But none of these arguments prevailed.

 And the Board affirmed the refusal

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