International trademark protection is an important part of business strategy for Korean companies expanding abroad. The US market is particularly significant for global brand planning.
However, many companies experience unexpected rejection because they believe that Korea's trademark judgment standards can be applied to the United States as well. This is because the two countries have different standards for judging trademark similarity.
It is well known that each country has different standards for determining trademark similarity, but not many people understand what factors actually influence the judgment and why the same trademark may be registered in Korea but rejected in the United States.
In this article, we will look at the differences in the judgment structures between Korea and the United States and what to keep in mind in practice, focusing on the DuPont Factors, which are the core criteria for determining US trademark similarity.
Judging trademark similarity between Korea and the U.S., fundamentally different standards
- Korea: Appearance, pronunciation, and meaning
Under Korean trademark law, whether trademarks are similar is judged based on their appearance, pronunciation, and meaning. Although the transaction status of the product and the consumer base are also taken into consideration, the actual center of judgment lies in the composition and expression of the trademark itself.
For example, even if the spelling or syllables are slightly different, if the overall pronunciation is similar or if it gives a similar impression to consumers, it is likely to be judged as a similar trademark. There are many cases where registration of coined trademarks is rejected if some components are common or the overall impression is similar.
In other words, Korea can be seen as having a structure that places relatively greater weight on the similarity of the trademark itself.
- United States: Focus on consumers’ ‘possibility of source confusion’
On the other hand, in the United States, judgment is based on whether consumers are likely to be confused about the origin of the two trademarks in the actual market (Likelihood of Confusion) rather than how similar the trademarks themselves are.
The DuPont framework identifies 13 factors for assessing likelihood of confusion in the United States. Not every factor is relevant in every case, and their weight depends on the evidence and circumstances.
Even where marks resemble each other in appearance or sound, differences in the legally relevant trade channels or purchasing conditions may reduce the likelihood of confusion.
Ultimately, the biggest difference is that in Korea, the judgment is based on the similarity of the trademark itself, and in the United States, the judgment is based on the possibility of confusion in the actual market.
Key judgment factors from U.S. DuPont Factors
1. Appearance, pronunciation, and meaning of the trademark
Even in the United States, appearance, pronunciation, and meaning are important judgment factors. However, rather than evaluating each brand individually, we consider the overall commercial impression formed when consumers encounter the brand to be more important.
Therefore, even if some of the spelling or pronunciation is similar, if the overall brand image is different, it may be judged as dissimilar.
2. Relevance of products and services
While Korea uses product similarity groups as an important criterion, the United States places greater emphasis on transaction relationships in the actual market.
Typically, we comprehensively review the following matters:
- Are they sold through the same distribution channel?
- Do consumers perceive products offered together by the same brand?
- Do advertising methods and sales channels overlap?
- Is it common for them to be treated together in the actual market?
For example, even if the classes are different, similarity may be recognized if the products are actually sold by the same brand. Conversely, there are cases where even the same class is judged to be dissimilar if the transaction environment is clearly differentiated.
3. Consumer’s level of caution
In the United States, buyer expertise and the complexity of the purchasing process are also important factors.
For products that are thoroughly reviewed during the purchasing process, such as expensive industrial equipment or B2B products, the likelihood of actual confusion may be judged to be low even if the trademarks are somewhat similar.
4. Actual usage in the market
U.S. examination also takes into account how the trademark is used in the actual market.
We determine the possibility of consumer confusion based on actual transaction situations such as distribution channels, sales methods, advertising formats, and online sales environments, and publicly disclosed market data and usage evidence are actively utilized during the examination process.
5. Distinctiveness of the trademark
Distinctiveness of a trademark is also an important factor.
Descriptive expressions that simply describe the nature or characteristics of a product have a narrow scope of protection and are also limitedly protected in judgments of likelihood of confusion. Conversely, the more distinctive a trademark is, the more likely it is to receive broader protection.
Differences between Korea and the United States through real-life examples
Let me give you an example that is a variation of a real event.
Let's assume that the applied trademark is "ACUTTON" and the preceding trademark is "THE CUTTON".
In Korea, registration was possible because the two trademarks were recognized as separate coined words and had differences in pronunciation and overall impression.
However, in the United States, the opposite conclusion was reached.
The United States Patent and Trademark Office (USPTO) determined that both trademarks share the core composition "CUTTON" and that the preceding "A" and "THE" are simple articles, so consumers are likely to recognize them as the same or related brands.
In particular, the following factors were comprehensively considered during the examination process.
- The marks' overall commercial impression
- Similarity in spelling composition
- similarity of key syllables
- Consumer perception of common brand naming
In this way, a trademark that can be registered in Korea may be rejected in the United States due to Likelihood of Confusion.
Response Strategies After Rejection
In this case, several countermeasures were considered together to overcome US rejection.
First, we reviewed the possibility of non-use cancellation to determine the possibility that the prior registered trademark had not actually been used for a certain period of time. This is because in the United States, a trademark may be canceled if actual use is not proven in accordance with certain requirements after registration.
At the same time, we also discussed with the other party and promoted a plan to use a trademark coexistence agreement. A coexistence agreement is a document that acknowledges each other's use of trademarks and agrees to coexist under certain conditions.
Although a coexistence agreement does not automatically guarantee registration in the United States, it can be used as an important reference in determining the likelihood of confusion.
Currently, the process is being conducted in a direction that combines review of the possibility of cancellation for non-use and a coexistence agreement strategy while also considering re-application if necessary.
This case offers the following implications:
- Just because a trademark is registered in Korea does not mean it can be registered in the United States.
- The United States examines trademarks using different standards than Korea, so prior research and strategy development for each country are necessary.
- You can increase your chances of overcoming rejection by utilizing unique U.S. response systems, such as coexistence agreements and cancellation for non-use.
Things you must check before applying for a U.S. trademark
1. Conduct separate trademark clearance searches in Korea and the United States.
In the United States, domestic research alone is not sufficient as affiliated brands, brand expansion possibilities, and relationships in the actual market must be considered.
2. The actual trading environment must be analyzed together.
The actual distribution structure must be reviewed, such as whether products are exposed together on online platforms and whether products are handled together by the same brand.
3. Transaction relationships between products must be confirmed rather than classes.
In the United States, whether consumers actually perceive a product as related is often more important than whether it is in the same class.
4. The distinctiveness of the trademark must be reviewed in advance.
You can increase the likelihood of registration by analyzing whether it is a coined trademark, whether it is a descriptive expression, and whether it has sufficient distinctiveness based on US standards.
Since Korea and the United States have different standards for judging trademark similarity, it is entirely possible for the same trademark to produce different results.
While Korea judges the similarity of the trademark itself based on appearance, pronunciation, and meaning, the United States judges based on the likelihood that consumers will be confused about the source in the actual market. Therefore, you should not expect the same results in the United States just because it is registered domestically.
If you are preparing to apply for a U.S. trademark, you need to fully understand the U.S. examination standards, including DuPont Factors, and take an approach tailored to the U.S. market, from preliminary research to designated good composition and application strategy. Such prior preparation can prevent unnecessary rejections and serve as a foundation for more stable overseas brand protection.
This article reflects the information available when it was published. Contact us to discuss your circumstances.