Discussion
Had a letter today from the IPO saying that they had received my application for a trademark, but that they believed that another trademark was so similar that the other TM holder may object. They tell me they will write to the TM holder if I wish to pursue it ( an American software company via na agent in Paris) but that should they object I may be liable for expenses of 'several thousand pounds'.
The product I want to trademark is titled with an English word, lets say it were a courier company called 'Immediately' and the US company has trademarked the word 'Immediate' for similar purposes (in this case we both want the software/web site TM.
It would be easy to choose another name but this one has already had some press and if I can I want to TM it. What would the chances be do you think of them actually objecting whe the word is relatively well known but that I am after a derivative of the word? I personally feel the IPO are being overly cautious.
My experience with them is that they do err on the side of caution.
My trademark was looked at by someone on the 'bottom rung' of the ladder. As soon as I questioned the decision she happily altered it partially for me and even offered to escalate to a higher decision maker to alter the rest!
I think their policy is 'cover all asses' unless you then come back and question it.
Their motivation in this case is to cover their asses 'in case' there is an objection.
They are correct in that to formally object a trademark the objector has to pay a charge, which if you then back down you are left with their costs I believe.
I think that it is a warning shot from them to make their lives (and maybe yours) easier!
If your company is UK based only and theirs is US based I cannot see them having a huge issue as your clientelle are unlikely to get confused. The only issue may be over the website name. I would be tempted to contact the trademark owner direct and ask them what they think is acceptable or unacceptable and come to an agreement without involving lawyers.
My trademark was looked at by someone on the 'bottom rung' of the ladder. As soon as I questioned the decision she happily altered it partially for me and even offered to escalate to a higher decision maker to alter the rest!
I think their policy is 'cover all asses' unless you then come back and question it.
Their motivation in this case is to cover their asses 'in case' there is an objection.
They are correct in that to formally object a trademark the objector has to pay a charge, which if you then back down you are left with their costs I believe.
I think that it is a warning shot from them to make their lives (and maybe yours) easier!
If your company is UK based only and theirs is US based I cannot see them having a huge issue as your clientelle are unlikely to get confused. The only issue may be over the website name. I would be tempted to contact the trademark owner direct and ask them what they think is acceptable or unacceptable and come to an agreement without involving lawyers.
The trade mark has actually expired but they have 12 months to resurrect it.
The IPO wouldn't be budged but as gently as they could they did suggest proceeding and running the risk of an objection costing me money (their costs in putting in the objection which I think is a £200 fee plus whatever legal fees come from filling the form in).
I have googled/dogpiled the US company and can't find them and can only find one reference to the company on a CV of a CEO saying he used to work in sales for them ( which I presume is some years ago). They may no longer be in existence.
There is a chance that I could have the original mark too in 12 months time.
The IPO wouldn't be budged but as gently as they could they did suggest proceeding and running the risk of an objection costing me money (their costs in putting in the objection which I think is a £200 fee plus whatever legal fees come from filling the form in).
I have googled/dogpiled the US company and can't find them and can only find one reference to the company on a CV of a CEO saying he used to work in sales for them ( which I presume is some years ago). They may no longer be in existence.
There is a chance that I could have the original mark too in 12 months time.
Edited by Gordon Brown on Tuesday 16th October 15:35
It looks like they registered the UK and European marks in 2006. The European one expired in early 2006 an they didn't renew it. The UK one is also out of date from late 2006 and the 13 month limit for renewal ends Jan 2008.
I am thinking they won't object, even if they still exist as I am not taking their exact mark (although I will in January!).
I am thinking they won't object, even if they still exist as I am not taking their exact mark (although I will in January!).
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