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

Bottom line: The Board found “Pick’s with its transliteration in katakana” not similar to “PIX / PHOTO IMAGING X-CHANGE (logo)”.

The applicant filed an application for “Pick’s with its transliteration in katakana” shown below for arranging, conducting and organization of seminars, etc. in Class 41.  The examiner refused the registration deeming that the applied-for mark is confusingly similar to a prior registration for “PIX / PHOTO IMAGING X-CHANGE (logo)” shown below designating organization of congresses and conferences for cultural and educational purposes, etc. in Class 41.

<Applied-for mark>


<Cited mark>

The main issue is whether the marks are distinguishable or not as some of the services of the applied-for mark are similar to those of the cited mark.

The Board observed both marks and found as follows:

<As for the applied-for mark>
The applied-for mark consists of “Pick’s” and “its transliteration in katakana”.  “Picks” means something selected.  The mark is literally pronounced as [pi-kku-su].

<As for the cited mark>
On the upper part of the cited mark is “PIX” in white within a black rectangle and on the lower part is “PHOTO IMAGING X-CHANGE” in black.  “PIX” will be extracted from the cited mark as it is larger than the rest.  “PIX” is not a dictionary word, and is pronounced as P-I-X alphabetically or as [pi-kku-su] in English-wise.

<Comparison>
- Both marks share the sound [pi-kku-su].
- As “PIX” in the cited mark has no particular meaning, the marks are not comparable in meaning.
- The marks are not similar to each other in appearance.
- The cited mark has two ways of pronunciation and only one of them is similar to the sound of the applied-for mark.  In view of the dissimilarity in appearance and meaning, it is not appropriate to judge that the marks are confusingly similar solely due to the similarity in one of the sound arises from the cited mark.  Overall, the marks are not similar to each other.

And so the Board reversed the refusal, and granted registration of “Pick’s with its transliteration in katakana”.