2008 Heo 3711 Trademark registration invalidation
[Decisions]
A service mark is generally assessed as a whole. Where a particular element attracts attention and supplies the mark's distinctiveness, that dominant element may be compared with the other mark.
Earlier registered service mark | The Registered Service Mark |
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[Comparison]
1. Appearance
The registered service mark: 
depicts a blue-and-white penguin wearing a yellow collar and black glasses,
with yellow lettering to its right:
The earlier registered service mark:
depicts a male and female monkey standing arm in arm in colored clothing,
with orange lettering below:
The two compositions differ in appearance.
depicts a blue-and-white penguin wearing a yellow collar and black glasses,with yellow lettering to its right:The earlier registered service mark:depicts a male and female monkey standing arm in arm in colored clothing,with orange lettering below:The two compositions differ in appearance.2. Pronunciation and concept
The graphics and wording are separable in both marks and can be perceived independently.
Both marks use wording meaning “Glasses Country.” For optical-store services, that wording describes the services and lacks distinctiveness under former Article 6(1)(3) of the Trademark Act.
Consumers would therefore identify the registered mark through its penguin graphic and the earlier mark through its pair of monkeys. Those images have different pronunciations and concepts.
[Decisions]
The marks differ in appearance, pronunciation and concept and were not considered similar overall.
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