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 “Shade by Yoshiya Keiko” not similar to “Shade”.

The applicant filed an application for “Shade by Yoshiya Keiko” in standard character designating clothing, footwear, clothing for sports, sports shoes, etc. in Class 25.  The examiner cited two registrations for “Shade”, one designates clothing, footwear, etc. in Class 25 and the other designates skateboards, sports equipment, etc. in Class 28.

The designated goods of the applied-for mark are related to those of the two cited registrations.  So, the main issue is the similarity of the marks with or without a designer’s name.

The Board observed the applied-for mark and found as follows:

- “Shade by Yoshiya Keiko” is presented in the same font and size and unified as a whole.  It is pronounced [she:-do-ba-i-yo-shi-ya-ke-i-ko] in one breath.
- Consumers and traders do not focus on “Shade” alone in the unified composition of the applied-for mark and there is no other reason that “Shade” alone functions as a source identifier.
- Therefore, it is inappropriate that the examiner extracted “Shade” from the applied-for mark and recognized it similar to the cited mark.

And so the Board reversed the refusal, and granted registration of “Shade by Yoshiya Keiko”.