Trademark Cancellation: Jurisdictional Knowledge

Squire Sanders intellectual property lawyers faced an uphill battle when a client sought cancellation of a competitor’s confusingly similar registration. Issues included the prior rejection of an opposition to the application that matured into the registration, and a client with no prior-filed trademark application or registration in South Korea. Our client and its competitor operated in the financial services and publishing industries. The marks at issue were extremely similar – so similar, in fact, that our client was convinced that the competitor’s choice of its mark could not have been a coincidence. Fortunately for our client, our IP lawyers have handled more than enough disputes in Asia to know that South Korea does not have the same rules, like res judicata and collateral estoppel, as the United States. By focusing on different facts than prior counsel, we saw an opportunity to take a second bite at the apple. Bringing a cancellation proceeding based on our client’s international fame, we prevailed in canceling the competitor’s registration.