We are a boutique IP firm located in Osaka, Japan, specializing in trademark, design, specific unfair competition and copyright matters.

Bottom line: The Board concluded that the applied-for mark “1ST(stylized)” is not confusingly similar to the cited marks “FIRST”, “transliteration of FIRST in katakana” and “FIRST(stylized)”.

The applicant filed a trademark application for the mark below in Classes 9, 35, 38 and 42.  The Examiner cited the three marks also shown below and refused the application on the ground of confusing similarity.

[The applied-for mark]

[The cited mark A]

[The cited mark B]

[The cited mark C]

Some of the designated goods and services of the applied-for mark are identical or similar with those of the cited marks.  So the question is whether the applied-for mark is distinguishable from the cited marks or not.  The Board found as follows:

- The applied-for mark consists of a figurative element and a literal element “ST”.  The figurative element comprises a white arrow pointing upward within a red hexagon, which has no meaning.
- The literal element “ST” is written in black and is smaller than the figurative element.
- The literal element “ST” have no distinctiveness, because two alphabet letters are commonly used as an item code or a model number.
- Therefore, consumers will recognize the distinctive appearance of the figurative element as a source identifier rather than the literal element.
- The applied-for mark will not have any pronunciation and a meaning of “first”.
- Overall, the applied-for mark is not confusingly similar to the cited marks.

And so the Board reversed the refusal, and the application for “1ST(stylized)” was granted for registration.

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