Korean companies in various industries have become an essential part of the fabric of the United States marketplace. Samsung, along with LG, are both well-known Korean consumer electronic brands. The expansion of Korean electronic brands in the United States marketplace dates back to the 1980s. Some of the biggest brands in the United States are owned by Korean companies, including Bobcat Construction Equipment company, which Doosan acquired in 2007. Also, because of the growing interest in K-beauty, K-pop, K-drama, and K-food, new brand owners are expanding their market shares in the United States with their products and services.
Despite being the same size as the state of Indiana, South Korea is home to many of the most well-known brands in the United States. In 2020 alone, $76.0 billion worth of goods and services were imported to the U.S. from Korea, equalling over $200 million worth of goods and services per day. Many Korean companies seek trademark registration in the United States to protect their brands and reduce consumer confusion.
Trademark filings in the United States by Korean Companies – Background & Data
|Number of U.S. Trademark Filings Made by Korean Companies|
|Year||Korean Trademark Filings|
As of February 2022, Korean individuals and companies have filed over 29,000 trademarks with the United States Patent Trademark Office (USPTO) since its inception. Over 19,293 of these trademarks – or 65% of all Korea-based trademarks – have been filed in the last five years alone.
In 2020, the number of Korea-based trademarks filed was almost double the number filed in 2016. The number of filings in 2020, increased by another 1,500 in 2021, as more Korean companies began filing trademark applications. This rising trend indicates that more and more Korean companies understand the importance of protecting their trademarks in the United States.
The increase in trademark filing numbers does not necessarily mean more companies are filing for U.S. trademark registration. Well-known Korean consumer electronics company, LG, is responsible for 2,743 filings in the U.S., accounting for over 9% of trademark filings made by Korean companies in the United States. Samsung, another Korean company with significant brand awareness in the United States, has filed 1,713 applications with the USPTO.
Applying for a U.S. trademark using a Korean trademark registration or application.
Many Korean companies use foreign registrations as a basis for their U.S. trademark applications, meaning that they can use both the Madrid Protocol and Paris Convention to apply. South Korea joined the Madrid Protocol in 2003 and the Paris Convention in 1980. Since 2019, 35% of the over 13,000 U.S. trademarks filed by Korean companies, have used either the Madrid Protocol or the Paris Convention as the basis for their application.
One of the issues, that applicants using the Madrid Protocol or the Paris Convention frequently face, is correctly identifying the goods and services of their mark. Generally, foreign applications allow and sometimes even encourage broad protection by identifying the goods and services in the most comprehensive ways. For example, instead of specifying the goods as ‘short-sleeved shirts, evening dresses, and dress pants’, foreign applications may have ‘clothes’, encompassing various items listed above.
This broad and comprehensive list causes unwanted delays in the registration process since Examining Attorneys at the USPTO will likely request a specified list of goods and services, creating unnecessary communications delaying the application process. These broad and comprehensive identifications, however, create other issues – Examining Attorneys can compare the application with registered (or unregistered) marks in the marketplace and refuse the application.
Even though none of these companies that the Examining Attorney compared the application to has anything to do with the seaweed or even snack industry, because the application’s ID was so broad and comprehensive, the applicant now has to spend time (and likely legal fees) removing goods and services. However, because the same examining attorneys will review the revision, it can be difficult to “unring the bell,” and the applicant may have difficulty convincing the examining attorney to remove the refusals.
Even if the marks are accepted “as-is,” it increases litigation risks and prosecution costs if another company monitoring the USPTO database sees a trademark overlapping with their rights based on the text of the application. An applicant may be subject to an enforcement letter against a company in a completely different industry.
The importance of conducting a U.S. trademark search for Korean companies
One of the common mistakes that international companies, including Korean companies, make is the belief that trademark registration in Korea or other countries provides the company with global trademark protection. Under the United States trademark system, both registered and unregistered trademark owners can enjoy their rights with proof of interstate sales in the United States. For example, let’s say a Korean clothing company called “Bora Namoo Gim” (Purple Tree Seaweed) filed a trademark in Korea and enjoyed the rights since 2019 but had no sales in the United States until 2022. If a United States-based company called ‘Bora Gim” (Purple Seaweed) started selling clothing online in the United States and filed a trademark application in 2021, this US-based company would have trademark priority in the United States over the Korean company with a similar name. In all likelihood, the US-based company could then block the Korean company from using that name in the United States.
In addition, the standards for “likelihood of confusion” may be different than in Korea. The factors for “likelihood of confusion” are not a mechanical test. The USPTO views eight factors when determining the confusion. Different examiners, however, may weigh each factor a little differently. Also, some district courts in the United States apply slightly different factors in determining the likelihood of confusion in enforcement matters. All of these complications and delicacies reinforce the importance of legal support from a U.S. trademark attorney.
Ultimately, before launching a business in the United States, it is advisable for a Korea-based business to conduct a very thorough and comprehensive trademark search in the United States. This type of report can help the Korean company identify a potential problem in the United States before any business activities begin.
There are many different things to consider as a Korean company filing a trademark application in the U.S. By hiring an experienced United States trademark attorney, Korean companies can help avoid common mistakes and delays.