Determining whether a trademark is distinctive or similar to an existing one is subjective and lacks a definitive answer. Even with thorough preparation and expert consultation, there is always a chance that your application may be rejected.
However, there’s no need to panic if you receive a rejection notice. Several remedies are available. Here are some common strategies to address trademark rejection reasons:
1. Submission of a Response (Opinion Letter)
If you believe the rejection is unjustified, you can submit an opinion letter to counter the examiner’s reasoning. For example, you might argue that the trademark has sufficient distinctiveness or that it’s not similar to a pre-registered trademark.
However, statistics show that opinion letters succeed in reversing rejection decisions only 10–20% of the time, so temper your expectations.
If you feel strongly that the rejection is unreasonable, you can first submit an opinion letter, then follow up with the examiner through a phone call or face-to-face meeting to present your case. Providing well-organized evidence can persuade the examiner to reconsider.
2. Filing an Appeal
If the examiner is not convinced and issues a final rejection, you have the right to file an appeal with the Intellectual Property Trial and Appeal Board (IPTAB). You can also escalate the case to the Patent Court and ultimately to the Supreme Court, giving you up to three additional opportunities to contest the decision.
According to IPTAB statistics, about 40% of appeals result in the reversal of a rejection. Therefore, if the trademark is crucial to your business, don’t give up after a single rejection—pursue further appeals.
3. Cancellation for Non-Use
If your application was rejected due to a similar pre-registered trademark, you can investigate whether the pre-registered trademark is currently in use. If it is not, you may file a cancellation for non-use claim to have that trademark removed.
Statistics from Korea’s Small and Medium Business Administration indicate that approximately 1 million new businesses are established each year, with 60% closing within three years. Consequently, many registered trademarks may no longer be in use.
Trademark law exists to protect business goodwill through registration and use. However, if companies register trademarks without using them, they hinder opportunities for others and impede industrial growth. Therefore, most countries’ trademark laws mandate active use of trademarks. In Korea, you can request the cancellation of a trademark if it hasn’t been used for three years leading up to the date of your claim.
If the trademark owner fails to provide appropriate evidence of use within the stipulated period, the Intellectual Property Trial and Appeal Board will cancel the registration.
Example: Large Corporations
Major companies like AmorePacific and LG Household & Health Care each hold over 15,000 registered trademarks, yet they actively use fewer than 100. This information is easily accessible on their websites since they are publicly traded companies. Even large corporations are not exempt from cancellation due to non-use, and many of their trademarks are revoked each year.
To prevent cancellation, the trademark must be genuinely used. Providing only catalogs or product photos may not suffice. Supporting documents, such as web pages, invoices, and purchase orders, are often required.
If you identify an unused pre-registered trademark, consider filing a non-use cancellation request. However, note that the trademark must have been registered for at least three years. If a trademark was registered less than three years ago, you cannot pursue this option.
4. Reapplication
If your trademark was rejected due to lack of distinctiveness, you may consider reapplying with a modified version. For example, you could combine your mark with a design element or symbol to increase its distinctiveness.
Korean trademark law only prohibits trademarks composed solely of non-distinctive elements. If a new combination creates sufficient distinctiveness, the revised application may succeed. Although you will need to restart the process, if the new application resolves the previous issues, your trademark can be registered.
5. Other Strategies
Additional options include trademark transfer, filing for invalidation, or other legal remedies. Even if your application is initially rejected, don’t give up. Explore all available strategies to secure your trademark registration.