Do I need professional help to register a trademark?
Discussion
Do I need professional help to register a trademark?
I had a lok at the the website to do this https://www.gov.uk/how-to-register-a-trade-mark/ap... and apart from some difficulty maybe selecting what class the item is in, it all looked straight-forward.
But am I mistaken? Is this something that one should take professional advice on when doing it for the first time?
I had a lok at the the website to do this https://www.gov.uk/how-to-register-a-trade-mark/ap... and apart from some difficulty maybe selecting what class the item is in, it all looked straight-forward.
But am I mistaken? Is this something that one should take professional advice on when doing it for the first time?
it depends, the IPO can be very strange- a made up word and no-one else using it, should be straightforward, but they will do a google search and any suggestion that the phrase or word is in use can lead to interesting responses... however if it goes wrong you can appeal and if necessary get a trademark attorney involved then, so I would go ahead...
An update here:
So I went ahead and registered my Trademark on my own just to see how it would go. Last week i received a letter back from the IPO saying:
"I have searched the relevant trade mark registers and found an earlier trade mark that I think you should be aware of. My initial view is that your trade mark and your goods are similar to the earlier trade mark and their goods. Therefore the public are likely to confuse your trade mark with the earlier trade mark, which is shown at the end of this report."
It turns out there is a German company with a product in a similar field (but not the same niche) with European Union Trademark also with a similar name us but different spelling. So, to use a hypothetical example here, it's like we make "Fisherman Car Mats" and this German company are "Fischerman Car furry dice" - the spelling of the two names is literally this close (just one letter difference that makes little/no difference to how you pronounce it) and we both make accessories for a broader market albeit completely different accessories. Their trademark is on the name "Fischerman" across a number of categories (including the one category I am trying to register for) and I'm trying to register "Fisherman Car Mats" - have I got a problem here?
The letter from the IPO goes on to say they are not going to object to my trademark request but:
"If you proceed, your application will be published in the online Trade Marks Journal and anyone can oppose your application should they have grounds to do so. If such action were to be successful, this would likely result in a costs award against you."
This strikes me as saying that I can apply for the trademark and if the German company don't object I'm in the clear but I'm not sure what happens if they do object. At that point could I just back down and withdraw my trademark and carry on trading as I was or do I open myself up to a world of pain where they then realise my business exists and tries to get me to change my name? Or should I contact them in advance to smoke the peace pipe and see if they have an issue with my firm? Or is it time to lawyer up?
I'd be grateful of the news of anyone who has an insight int how this process works and what risks I may be facing. Thank you.
So I went ahead and registered my Trademark on my own just to see how it would go. Last week i received a letter back from the IPO saying:
"I have searched the relevant trade mark registers and found an earlier trade mark that I think you should be aware of. My initial view is that your trade mark and your goods are similar to the earlier trade mark and their goods. Therefore the public are likely to confuse your trade mark with the earlier trade mark, which is shown at the end of this report."
It turns out there is a German company with a product in a similar field (but not the same niche) with European Union Trademark also with a similar name us but different spelling. So, to use a hypothetical example here, it's like we make "Fisherman Car Mats" and this German company are "Fischerman Car furry dice" - the spelling of the two names is literally this close (just one letter difference that makes little/no difference to how you pronounce it) and we both make accessories for a broader market albeit completely different accessories. Their trademark is on the name "Fischerman" across a number of categories (including the one category I am trying to register for) and I'm trying to register "Fisherman Car Mats" - have I got a problem here?
The letter from the IPO goes on to say they are not going to object to my trademark request but:
"If you proceed, your application will be published in the online Trade Marks Journal and anyone can oppose your application should they have grounds to do so. If such action were to be successful, this would likely result in a costs award against you."
This strikes me as saying that I can apply for the trademark and if the German company don't object I'm in the clear but I'm not sure what happens if they do object. At that point could I just back down and withdraw my trademark and carry on trading as I was or do I open myself up to a world of pain where they then realise my business exists and tries to get me to change my name? Or should I contact them in advance to smoke the peace pipe and see if they have an issue with my firm? Or is it time to lawyer up?
I'd be grateful of the news of anyone who has an insight int how this process works and what risks I may be facing. Thank you.
does that company sell into your market (e.g. German company selling into the UK market?)
are you happy with a trademark just in your market
if they don't and you don't want a world-wide market / trademark, then you should be fine
if they do / you do - then you might not be...
trademarks of big companies are not always world-wide and sit alongside competitors in different markets - c.f. the recent news on Wheatabix being confiscated from a shop in NZ selling British produce - because another company there has the trademark for Wheat-bix or similar...
are you happy with a trademark just in your market
if they don't and you don't want a world-wide market / trademark, then you should be fine
if they do / you do - then you might not be...
trademarks of big companies are not always world-wide and sit alongside competitors in different markets - c.f. the recent news on Wheatabix being confiscated from a shop in NZ selling British produce - because another company there has the trademark for Wheat-bix or similar...
Thanks Jon, glad to have helped!
In answer to the original question, you might or might not need help to register a trade mark. The two main reasons for seeking help are that you're too busy and want someone else to deal with it for you, or because there's something (that you might or might not know about) that affects your particular situation and which ought to be sorted out properly. Plenty of people manage on their own, but I do see some howlers. The three basic elements of an application are "Who are you?", "What is your trade mark?" and "What are you using it on?"; most people can answer those questions (although I did see a case where someone got all three wrong...), but there are a couple of pitfalls to fall into if you're not sure what you're doing. Getting professional help means we pick the optimal answers, as we did for Jon, but it does of course mean your new tyre fund is a bit depleted in favour of mine.
seaninog's latest question (about the earlier German company) is a common one. Depending on the precise circumstances, it might be a very serious problem indeed, or an entirely trivial one. Or it might be something in between - a potentially serious problem that is easy to solve if a little pre-emptive action is taken. If the Trade Marks Registry is right, i.e. the German company's mark is indeed similar, and there is no defensive action that can be taken, and you let the application go forward, then the possible outcomes are:
- the Germans notice the application and oppose. If all the assumptions are correct then they will win the opposition and you'll be on the hook for costs of up to about £2k depending on how far you fight it. Your use of the mark in the UK will be an infringement of the German company's rights, so the likely next step is for them to ask you to stop on pain of Court action.
- the Germans don't notice, or notice it but don't bother to oppose. You will be granted a registration but it will be invalid. At any point, the Germans will be able to apply to have it revoked and then you're into the same situation as if they had opposed. Or they might just go straight to Court.
So really what needs to be done is to assess the situation accurately and decide whether the German mark is too close, whether it is vulnerable in any way, and whether they are likely to be amenable to a discussion about co-existence.
Needless to say, as the prior mark is an EU mark, all of the above is complicated by Brexit-related considerations.
In answer to the original question, you might or might not need help to register a trade mark. The two main reasons for seeking help are that you're too busy and want someone else to deal with it for you, or because there's something (that you might or might not know about) that affects your particular situation and which ought to be sorted out properly. Plenty of people manage on their own, but I do see some howlers. The three basic elements of an application are "Who are you?", "What is your trade mark?" and "What are you using it on?"; most people can answer those questions (although I did see a case where someone got all three wrong...), but there are a couple of pitfalls to fall into if you're not sure what you're doing. Getting professional help means we pick the optimal answers, as we did for Jon, but it does of course mean your new tyre fund is a bit depleted in favour of mine.
seaninog's latest question (about the earlier German company) is a common one. Depending on the precise circumstances, it might be a very serious problem indeed, or an entirely trivial one. Or it might be something in between - a potentially serious problem that is easy to solve if a little pre-emptive action is taken. If the Trade Marks Registry is right, i.e. the German company's mark is indeed similar, and there is no defensive action that can be taken, and you let the application go forward, then the possible outcomes are:
- the Germans notice the application and oppose. If all the assumptions are correct then they will win the opposition and you'll be on the hook for costs of up to about £2k depending on how far you fight it. Your use of the mark in the UK will be an infringement of the German company's rights, so the likely next step is for them to ask you to stop on pain of Court action.
- the Germans don't notice, or notice it but don't bother to oppose. You will be granted a registration but it will be invalid. At any point, the Germans will be able to apply to have it revoked and then you're into the same situation as if they had opposed. Or they might just go straight to Court.
So really what needs to be done is to assess the situation accurately and decide whether the German mark is too close, whether it is vulnerable in any way, and whether they are likely to be amenable to a discussion about co-existence.
Needless to say, as the prior mark is an EU mark, all of the above is complicated by Brexit-related considerations.
I registered my company's trademark myself. It was straightforward, although I appreciate if there was a challenge it might not have been. In my case, however, they wouldn't allow me to register the full company logo, using the full company name, as apparently the words are too descriptive of what we do ( however I see other companies that are similarly named as registered trademarks, so who knows how they gauge this criteria). I was allowed to proceed with the abbreviated logo however, and this was accepted.
Note the wording on your reply, about publishing in journals and possible appeals, exactly mirrors the wording of my application and must therefore be a relatively standard response.
I queried the wording with my IPO case officer and found the helpful. So don't be put off speaking with yours, if you think it would help your peace of mind.
Finally, be aware of the official looking scams you will receive regarding registering your trademark elsewhere....
Note the wording on your reply, about publishing in journals and possible appeals, exactly mirrors the wording of my application and must therefore be a relatively standard response.
I queried the wording with my IPO case officer and found the helpful. So don't be put off speaking with yours, if you think it would help your peace of mind.
Finally, be aware of the official looking scams you will receive regarding registering your trademark elsewhere....
Hi folks
Hoping to get the advice of patently but advice welcome from anyone in the know.
I want to register a trademark. Someone on Instagram is already using the same name but in a hobby setting. Having looked through their account, it doesn't look like they're earning money from the account.
Our website will be their www.username.com which I have registered already.
My understanding is that if I have a trademark, Instagram will give me the account I want. This obviously carries the risk that the existing account holder kicks up a stink. Maybe they will kick up a stink anyway on hearing about my new commercial website that carries their Instagram name.
My question is: When I file for registering a trademark, will the people looking at my application look on Instagram for existing use of that name? Initial searches suggest no trademark has been filed under that name.
Thoughts please
Hoping to get the advice of patently but advice welcome from anyone in the know.
I want to register a trademark. Someone on Instagram is already using the same name but in a hobby setting. Having looked through their account, it doesn't look like they're earning money from the account.
Our website will be their www.username.com which I have registered already.
My understanding is that if I have a trademark, Instagram will give me the account I want. This obviously carries the risk that the existing account holder kicks up a stink. Maybe they will kick up a stink anyway on hearing about my new commercial website that carries their Instagram name.
My question is: When I file for registering a trademark, will the people looking at my application look on Instagram for existing use of that name? Initial searches suggest no trademark has been filed under that name.
Thoughts please
One more question
If I start a business called, let's say burger shed, what protection should I seek for the name? The name is made up of two common words but probably unique in that no one has used burger shed as a restaurant name before.
If I don't trademark the name, can someone come along afterwards and trademark it and then get boisterous and seek damages or generally make life difficult for me?
In short, should I trademark my business name to protect myself from headache in the future from someone who might trademark it if I don't trademark it?
If I start a business called, let's say burger shed, what protection should I seek for the name? The name is made up of two common words but probably unique in that no one has used burger shed as a restaurant name before.
If I don't trademark the name, can someone come along afterwards and trademark it and then get boisterous and seek damages or generally make life difficult for me?
In short, should I trademark my business name to protect myself from headache in the future from someone who might trademark it if I don't trademark it?
They can't automatically come along and bully you if you can show prior use.
But for as cheap as it is, I would TM the name.
Two variations allowed on one fee, So you could TM :
BURGER SHED
BURGERSHED
for example. Just check it's doable and look at the classes. Advice is look at a close competitor TM and what they have covered, what classes.
All searchable on the U.K. TM site.
But for as cheap as it is, I would TM the name.
Two variations allowed on one fee, So you could TM :
BURGER SHED
BURGERSHED
for example. Just check it's doable and look at the classes. Advice is look at a close competitor TM and what they have covered, what classes.
All searchable on the U.K. TM site.
MrJuice said:
Hi folks
Hoping to get the advice of patently but advice welcome from anyone in the know.
I want to register a trademark. Someone on Instagram is already using the same name but in a hobby setting. Having looked through their account, it doesn't look like they're earning money from the account.
Our website will be their www.username.com which I have registered already.
My understanding is that if I have a trademark, Instagram will give me the account I want. This obviously carries the risk that the existing account holder kicks up a stink. Maybe they will kick up a stink anyway on hearing about my new commercial website that carries their Instagram name.
My question is: When I file for registering a trademark, will the people looking at my application look on Instagram for existing use of that name? Initial searches suggest no trademark has been filed under that name.
Thoughts please
Thanks vdn for your insights which have led to:Hoping to get the advice of patently but advice welcome from anyone in the know.
I want to register a trademark. Someone on Instagram is already using the same name but in a hobby setting. Having looked through their account, it doesn't look like they're earning money from the account.
Our website will be their www.username.com which I have registered already.
My understanding is that if I have a trademark, Instagram will give me the account I want. This obviously carries the risk that the existing account holder kicks up a stink. Maybe they will kick up a stink anyway on hearing about my new commercial website that carries their Instagram name.
My question is: When I file for registering a trademark, will the people looking at my application look on Instagram for existing use of that name? Initial searches suggest no trademark has been filed under that name.
Thoughts please
The plot thickens. The main competitors in the UK have registered their name, logo and slogan as TMs in several classes. That tells me we definitely need to register ours.
Our plan was to launch our business in the next four weeks or so. Our focus groups have seen our name but our name is not widely known. There's no landing page on the website.
When we launch, the competition will see our name. And may well see our TM application. They might cause problems for us by contesting our application. They may support the hobby Instagram account to contest it. They will definitely see us as a threat to their business, I know that for sure.
Not sure what to do now
Should we delay our launch until we have our TM in hand? I probably need to speak to a TM lawyer but we are launching this thing from savings and need to be as frugal as possible..
MrJuice said:
Hi folks
Hoping to get the advice of patently but advice welcome from anyone in the know.
I want to register a trademark. Someone on Instagram is already using the same name but in a hobby setting. Having looked through their account, it doesn't look like they're earning money from the account.
Our website will be their www.username.com which I have registered already.
My understanding is that if I have a trademark, Instagram will give me the account I want. This obviously carries the risk that the existing account holder kicks up a stink. Maybe they will kick up a stink anyway on hearing about my new commercial website that carries their Instagram name.
My question is: When I file for registering a trademark, will the people looking at my application look on Instagram for existing use of that name? Initial searches suggest no trademark has been filed under that name.
Thoughts please
Sounds like a proper tHoping to get the advice of patently but advice welcome from anyone in the know.
I want to register a trademark. Someone on Instagram is already using the same name but in a hobby setting. Having looked through their account, it doesn't look like they're earning money from the account.
Our website will be their www.username.com which I have registered already.
My understanding is that if I have a trademark, Instagram will give me the account I want. This obviously carries the risk that the existing account holder kicks up a stink. Maybe they will kick up a stink anyway on hearing about my new commercial website that carries their Instagram name.
My question is: When I file for registering a trademark, will the people looking at my application look on Instagram for existing use of that name? Initial searches suggest no trademark has been filed under that name.
Thoughts please
ttish thing to do. MrJuice said:
... can someone come along afterwards and trademark it and then get boisterous and seek damages or generally make life difficult for me?
Isn't this what you're essentially doing to the insta person? Seems very underhand to me. Do you want a pissed off Instagram person then looking for ways to get their own back - especially given they can show prior use.
ChocolateFrog said:
MrJuice said:
Hi folks
Hoping to get the advice of patently but advice welcome from anyone in the know.
I want to register a trademark. Someone on Instagram is already using the same name but in a hobby setting. Having looked through their account, it doesn't look like they're earning money from the account.
Our website will be their www.username.com which I have registered already.
My understanding is that if I have a trademark, Instagram will give me the account I want. This obviously carries the risk that the existing account holder kicks up a stink. Maybe they will kick up a stink anyway on hearing about my new commercial website that carries their Instagram name.
My question is: When I file for registering a trademark, will the people looking at my application look on Instagram for existing use of that name? Initial searches suggest no trademark has been filed under that name.
Thoughts please
Sounds like a proper tHoping to get the advice of patently but advice welcome from anyone in the know.
I want to register a trademark. Someone on Instagram is already using the same name but in a hobby setting. Having looked through their account, it doesn't look like they're earning money from the account.
Our website will be their www.username.com which I have registered already.
My understanding is that if I have a trademark, Instagram will give me the account I want. This obviously carries the risk that the existing account holder kicks up a stink. Maybe they will kick up a stink anyway on hearing about my new commercial website that carries their Instagram name.
My question is: When I file for registering a trademark, will the people looking at my application look on Instagram for existing use of that name? Initial searches suggest no trademark has been filed under that name.
Thoughts please
ttish thing to do. take-good-care-of-the-forest-dewey said:
Isn't this what you're essentially doing to the insta person?
Seems very underhand to me. Do you want a pissed off Instagram person then looking for ways to get their own back - especially given they can show prior use.
On reflection, we are not seeking to take the handle. This particular Instagram person is welcome to keep their account given it's a hobby account and they had it first. And you're right, we could do without someone making life difficult for us. Seems very underhand to me. Do you want a pissed off Instagram person then looking for ways to get their own back - especially given they can show prior use.
What we do need, however, is for no one to use the name in a commercial setting.
It's all quite unfortunate in that we brain stormed for ages to find a suitable name which we just assumed would be available to register given its made up of two common words but not two words you'd ever place alongside each other. We agreed on the name. Registered the website. And then find the Instagram handle is taken. Grr. That the .com web address was available for us to buy shows the Instagram account is a hobby account.
But there are ways around. We can have firstword_secondword, firstsecond.com etc as the handle. No massive Biggie
This whole exercise is to protect us from harm in the future from competitors and stop use of the words together commercially. The Instagram chap is not a competitor. The use of the words together has not been done elsewhere but it's a catchy name and competitors could well use it if it's not protected.
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