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Bottom line: The Board found that “HERBAL OIL GOLD with its transliteration in katakana” is not descriptive for cosmetics, soaps, etc. in Class 3 and is not misdescriptive of their quality.

The applicant filed a trademark application for “HERBAL OIL GOLD with its transliteration in katakana” shown below designating cosmetics, soaps, etc. in Class 3. 

<Applied-for mark>

The examiner refused the application on the ground as follows:
- The applied-for mark is presented in a common manner.  Herbal oil and its transliteration in katakana refers to oil extracted from herb and is widely used in the cosmetic industry.  Gold and its transliteration in katakana is commonly used as a laudatory word.  Accordingly, the mark as a whole means high-quality oil extracted from herb.
- Therefore, the mark is descriptive when used for cosmetics including the oil extracted from herb or essential oil including herb, and is misdescriptive of the quality of goods when used for the goods other than the above.

The Board observed the applied-for mark and found as follows:
- Herbal oil and its transliteration in katakana may refer to the oil extracted from plant and Gold and its transliteration in katakana may be laudatory of goods.  However, “HERBAL OIL GOLD” (or its transliteration in katakana) as a whole will not be recognized as the quality of goods specifically, and is a coined term having no particular meaning.
- The Board did not find any proof that “HERBAL OIL GOLD” or its transliteration in katakana are commonly used with the particular significance in trade and any circumstance that consumer and trader will regard it as an indication of the quality of goods.
- The mark is fully capable of functioning as a source identifier and is not likely to be misdescriptive.

And so the Board reversed the refusal, and the application for “HERBAL OIL GOLD with its transliteration in katakana” was granted for registration.