A Tale of Two Systems: Comparing U.S. and Korean Trademark Law Through the ChatGPT Case
Pine IP
February 6, 2025
OpenAI’s application to register its chatbot's name, “ChatGPT,” with the U.S. Patent and Trademark Office (USPTO) was refused for lacking distinctiveness. Under U.S. trademark law, a "descriptive mark"—one that directly describes a feature or characteristic of the goods or services—is generally not registrable.
The USPTO found that “Chat” is a generic term for online conversation, and “GPT,” an acronym for ‘Generative Pre-trained Transformer,’ is recognized as a technical term for a type of artificial intelligence model. Consequently, the examiner concluded that the combination of these two words merely describes the function and features of the product and, therefore, lacks the inherent distinctiveness required for registration on the Principal Register.
In response, OpenAI submitted a vast amount of evidence arguing that “ChatGPT” had already become widely recognized by the media and consumers. Despite these efforts, a final refusal was issued on February 9, 2024. OpenAI is now reportedly exploring alternative paths, such as registration on the Supplemental Register or an appeal to the Trademark Trial and Appeal Board (TTAB). Meanwhile, a separate application for the mark “GPT” alone was also rejected for the same reasons, leaving both “ChatGPT” and “GPT” unregistered in the United States.
In contrast, OpenAI successfully registered “ChatGPT” as a trademark in South Korea. The Korean Intellectual Property Office (KIPO) allows for an exception for marks that directly describe the nature of a product if they can be proven to have acquired distinctiveness through use.
Since its launch, ChatGPT has created a global sensation. In Korea, its explosive growth in user numbers and extensive media coverage quickly established the name as a brand identifying a specific source in the minds of consumers. Based on this widespread recognition and usage, KIPO determined that ChatGPT had acquired distinctiveness as a source identifier and granted the registration.
Ultimately, the same trademark that faced refusal in the U.S. for a lack of distinctiveness was successfully registered in Korea by proving acquired distinctiveness. This case serves as a prime example of how differences in national trademark systems can directly impact a company's ability to protect its brand.
① First-to-Use vs. First-to-File
The United States operates on a first-to-use principle, where the first party to actually use a trademark in commerce gains priority rights. These common law rights can be established regardless of whether the trademark is registered.
South Korea, on the other hand, follows a first-to-file (or registration-based) system. The party that files an application with KIPO first obtains the trademark rights. In this system, the filing date is more critical than the date of first commercial use. An application can be filed in Korea based on an intent to use. To encourage actual use, a registered mark becomes vulnerable to cancellation if it is not used for three consecutive years.
However, there are exceptions. If an applicant attempts to register a mark that imitates another party's well-known mark, the application can be refused or the registration invalidated. A prior user may also be granted the right to continue using their mark under specific conditions, though these "prior user rights" are essentially defensive and do not confer the exclusive status of a registered trademark owner.
② Trademark Examination Standards
Both countries consider distinctiveness a core requirement for registration. Marks that are generic terms or directly describe the function or quality of goods or services are generally not registrable.
The U.S. allows for registration if a descriptive mark can be proven to have acquired distinctiveness (also known as "secondary meaning") through a certain period of actual use. For instance, a mark that was originally descriptive can be registered if it has gained significant brand recognition over many years.
Similarly, Korea prohibits the registration of descriptive marks in principle but makes an exception if the mark has become so well-known in the domestic market that it has acquired the function of a source identifier. This is precisely the condition that ChatGPT met, leading to a different outcome than in the U.S. In its examination, KIPO likely concluded that even though “Chat” and “GPT” are generic and technical English terms, they had come to be recognized by Korean consumers as a trademark indicating a specific origin.
③ Differences in Prior User Rights and Opposition Procedures
As a first-to-use country, the U.S. provides strong protection for those who first used a mark in the market. A prior user can file an opposition during the publication period of a later-filed application or, even after registration, may retain the right to continue using the mark in a specific geographic area or field.
In Korea’s first-to-file system, simply claiming "I used it first" is insufficient grounds to block a registration during the two-month opposition period following an application's publication. A successful opposition must be based on legally prescribed grounds for refusal, such as the mark being an imitation of a well-known trademark. After registration, a mark can be challenged at any time through an invalidation trial or cancelled through a non-use cancellation trial if it has not been used for an extended period.
④ Scope of Protection and Post-Registration Use
A U.S. federal trademark registration provides nationwide rights but may not supersede the rights of a prior user in a specific local area. In Korea, a registered trademark grants exclusive nationwide rights, and unregistered users generally face a high risk of infringement.
However, in Korea, anyone can request a non-use cancellation trial for a trademark that has not been used for three years. Ultimately, both countries share the principle that a trademark not in use is not protected. The key difference is that the U.S. emphasizes use throughout the entire registration process and beyond, while Korea prioritizes securing registration first, with the requirement to prove use within a specified period thereafter.
OpenAI’s ChatGPT trademark case is a compelling study in contrasts. While deemed a descriptive mark and denied registration in the U.S., it was successfully registered in South Korea based on acquired distinctiveness. This starkly demonstrates how differences in national legal systems can affect the protection of innovative technology brands. It also serves as a lesson that brand names incorporating technical acronyms or terms, while effective for building immediate understanding and attention, can present significant obstacles to trademark protection.
In the United States, there is still a possibility that ChatGPT could achieve registration in the future as it continues to function as a unique brand identifier over time, thereby strengthening its claim of acquired distinctiveness. In first-to-file countries like Korea where the trademark is already secured, OpenAI is expected to actively enforce its rights to protect its brand.
For any company operating globally, the key takeaway is clear: it is crucial to understand the nuances of trademark systems in key markets and to implement a proactive strategy to secure trademark rights in alignment with product launch timelines.
