US Simplifies 'Trademark Cancellation' Procedures...KIPO Warns "Trademark Management Will Become More Challenging"

Provided by the Korean Intellectual Property Office

[Asia Economy (Daejeon) Reporter Jeong Il-woong] The United States is simplifying the cancellation procedure for unused trademarks. The Korean Intellectual Property Office (KIPO) anticipates that this change may make trademark management relatively more challenging for domestic companies.

According to KIPO on the 16th, the United States will implement the revised Trademark Act starting December 27 of this year. The core of the revised act is to strengthen the use requirement by simplifying the cancellation procedure for unused trademarks.

The strengthening of the use requirement aims to prevent cases where evidence of use is fabricated to fraudulently apply for or register trademarks as if they were in use.

The main changes include the introduction of a cancellation and reexamination system for registered trademarks, allowing anyone to easily request cancellation if a registered trademark is not actually used, and enabling examiners to cancel trademarks ex officio.

During the trademark examination period, third parties can submit evidence that the trademark is not being used to the examiner, who must decide within two months whether to utilize the submitted evidence. Additionally, the Trademark Act now explicitly presumes that trademark owners suffer irreparable harm in cases of trademark infringement lawsuits, making it easier for trademark owners to obtain injunctions against use.

Furthermore, the United States has changed the response period to the local patent and trademark office’s provisional refusal notice (corresponding to Korea’s office action) from the existing six months to a range of ‘60 days to six months’ depending on the case.

The issue is that once the revised U.S. Trademark Act is enforced, registered trademarks not used within the U.S. can be easily canceled, requiring caution from domestic applicants.

Basically, trademark systems can differ by country according to the principle of territoriality. For example, Korea adopts the ‘registration principle,’ where trademark rights are granted by the administrative office registering the trademark in the trademark register.

In contrast, the United States applies the ‘use principle,’ where trademark rights arise from actual use of the trademark. The U.S. use principle requires proof of legitimate use even after the trademark is registered.

According to KIPO, with the recent revision simplifying the cancellation procedure for unused trademarks, even already registered trademarks may be subject to cancellation if not properly managed.

Mok Seong-ho, Director of the Trademark and Design Examination Bureau at KIPO, advised, “Applicants should limit their applications to goods and services they intend to use according to the revised U.S. Trademark Act and secure evidence of actual use in advance to prevent cancellation.”

This content was produced with the assistance of AI translation services.