특허심판원 2014.10.30. 심결 2013원4371 국제상표등록출원 제1118176호 거절결정불복심판 심결에 대하여

A Case Study Regarding Trademark Trial Board Case No. 2013WON4371 against Examiner’s Rejection for “ROCKY MOUNTAIN CHOCOLATE FACTORY” for Class 35

The Korean Trademark Office rejected “ROCKY MOUNTAIN CHOCOLATE FACTORY” for “retail store services in the field of chocolates and other confections” in Class 35, reasoning that the mark is lack of distinctiveness under the provision of Article 6 Section 1 Paragraph 7 of Korean Trademark Act. In my opinion, “CHOCOLATE”, “FACTORY” or “CHOCOLATE FACTORY” is not distinctive in connection with the designated services due to the descriptiveness thereof, however, “ROCKY MOUNTAIN” has nothing to do with the services. “ROCKY MOUNTAIN” is an arbitrary in connection with the services. Accordingly, the mark is inherently distinctive for registration as trademark. Even worse, the Trademark Trial Board had discussed about the secondary meaning of the mark by use, which is not necessary because the mark is an arbitrary but not a descriptive.