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Bottom line: The Board found “X-COOL (standard character)” not similar to “COOL / its transliteration in katakana” and “stylized COOL with device”.

The applicant filed a trademark application for “X-COOL (standard character)” designating chemicals for use in the manufacture of cosmetics having effect of cooling sensation in Class 1 and cosmetics having effect of cooling sensation in Class 3.  The Examiner cited 2 prior marks, “COOL / its transliteration in katakana” in Class 3 and “stylized COOL with device” in Classes 3 and 5, and refused the application.

<Cited mark A>


<Cited mark B>

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

-　The applied-for mark is a composite mark that consists of a combination “X” and “COOL” connected with a hyphen.  Hyphen is commonly used to make a compound word.
-　The element “COOL” in the applied-for mark is a well-known English word in Japan.  Additionally, both “COOL” and “its transliteration in katakana are widely used to refer to the goods having effect of cooling sensation in the cosmetics industry.   Consumers will recognize that “COOL” describes quality of goods.  Thus, “COOL” will not be a source identifier and will not give the consumers so strong impression.
-　The applied-for mark as a whole has a sound [e-kku-su-ku:-ru] which can be pronounced in one breath.
-　As a result, consumers will acknowledge that the applied mark is unified as a whole.
-　The Board found that the applied-for mark does not have a sound [ku:-ru] and a meaning “cool”

And so the Board reversed the refusal.  The application for “X-COOL” was granted for registration..