[Patent Talk] What Are the Chances My Trademark Will Be Registered?

"What percentage chance is there that my trademark will be registered? I want to go ahead only if registration is certain."

This is the most awkward question I face in practice as a patent attorney. I understand the client's position: a trademark is registered only about a year after filing, and it would be a real problem if it were rejected after the client had already registered the business, launched a website, started selling products and carried out various other business activities. However, there are not many cases in which the likelihood of registration is so high that I can assure a client that the mark will be registered.

In practice, even when registration appears possible, I advise clients that whether a mark will actually be registered can only be known after it is examined by KIPO. This is because I have experienced cases in which I advised that registration was likely, yet the application was rejected after filing. The similarity of marks is determined by considering many factors, such as whether each word is distinctive in relation to the designated goods and whether the word is so widely used in actual trade that it lacks distinctiveness, and the assessment can never be entirely free from the examiner's subjective judgment.

As a result, except in a very small number of cases, it is nearly impossible to file an application with 100 percent certainty of registration. The best way to eliminate the uncertainty is to file a request for accelerated examination and see whether a decision to publish for opposition is issued within roughly two to three months. If you want to register a mark in multiple classes, a good strategy is to file and request accelerated examination in one class first, confirm whether it will be registered, and then extend the filing to other classes.

Then, if a notice of preliminary rejection is issued by KIPO after filing because there are grounds for rejection, should you abandon the mark immediately? Not always. For example, if the prior mark has been registered for more than three years and it appears that the prior mark has not been used for the designated goods cited in the grounds for rejection, filing a non-use cancellation trial is one option. Since the burden of proving use lies with the trademark owner, the trademark is often cancelled straightaway when the owner has not actually used it and fails to file a response.

Recently, an invalidation trial was filed against some of the designated goods of a client's trademark registration. It was filed by a party whose own application had been rejected because of the client's registration. After consulting with the client, I negotiated an assignment of the trademark right for tens of millions of won...