Trademark lawyer/attorney needed - any recommendations?
Discussion
I applied to register a trademark for our company name earlier this year - no issues with the logo/device but having problems getting the name accepted. It’s been rejected on the grounds they believe it’s a descriptive term.
It’s a grey one I think - in the industry, it’s NOT used as a descriptive term, it just sounds like it could be. In my (not legal trained) opinion the issue they have is no different to what could apply to many successfully registered marks.
So, I need some professional advice... I would like to go through the correspondence with an expert (preferably face to face, but fax/phone would be acceptable) and let them tell me whether its worth:
a) Coming up with a good case/argument and trying to change their decision.
b) Give up, just register the logo/device and be done with it.
Referrals / recommendations would be appreciated, if possible please advise of rates and feasibility of coming to my office for an hour in Feering, Essex (CO5 9SE).
Many Thanks
It’s a grey one I think - in the industry, it’s NOT used as a descriptive term, it just sounds like it could be. In my (not legal trained) opinion the issue they have is no different to what could apply to many successfully registered marks.
So, I need some professional advice... I would like to go through the correspondence with an expert (preferably face to face, but fax/phone would be acceptable) and let them tell me whether its worth:
a) Coming up with a good case/argument and trying to change their decision.
b) Give up, just register the logo/device and be done with it.
Referrals / recommendations would be appreciated, if possible please advise of rates and feasibility of coming to my office for an hour in Feering, Essex (CO5 9SE).
Many Thanks
As you have been trading for a number of years under that name then there is a chance that you could argue that the name has acquired distinctiveness through use - this would require you putting evidence of the use (for example the nature, extent, time of the use) together with a statement supporting that evidence to the Registry. This can be time consuming to put together (and therefore costly when using a Trade Mark Attorney), but may be the best way to proceed.
Have you spoken with the Registry Examiner by phone, explained the situation and told them to look on Google for example to see that the majority of results are your company? The Registry are usually very helpful to private applicants and it may be worth a try - at least see what they suggest as it may enable you to avoid the costs of an attorney.
As far as firms go - I know Dummett Copp, based near Ipswich (so not too far away) - ask for Claire or Alison as they are the Trade Mark Attorneys. Costs are a bit difficult to guess as the amount of work will very depending upon the complexity of the evidence.
What is the mark in question?
Alex
Have you spoken with the Registry Examiner by phone, explained the situation and told them to look on Google for example to see that the majority of results are your company? The Registry are usually very helpful to private applicants and it may be worth a try - at least see what they suggest as it may enable you to avoid the costs of an attorney.
As far as firms go - I know Dummett Copp, based near Ipswich (so not too far away) - ask for Claire or Alison as they are the Trade Mark Attorneys. Costs are a bit difficult to guess as the amount of work will very depending upon the complexity of the evidence.
What is the mark in question?
Alex
Edited by AlexB on Monday 19th November 09:54
Descriptive words are always going to be tricky in terms of registering as a trademark. In my experience (a case very similar to your situation) I found that the examiner dealing with our application was quite helpful.
I'm sure you have researched the rules and regs thoroughly; although you, yourself, may be convinced that the mark is unique to you and your trade, it is also worth remembering that the examiner's judgement is based on not only how the mark may restrict others from using that word, but also to protect you (or your mark) from any future infringement.
There is a company trading in my industry that have quite a 'descriptive' name (made up of two words). In my opinion, their mark no longer has any value to it as the 'word' is such a widely used 'phrase'. This particular company have such a recognisable household name as their brand, they have been trying to restrict anyone using the two words (that their brand is made up of) as two separate words.
It's a frustrating subject, but the rules are in place to protect all concerned.
Example: The word 'auto' is an abbreviation that can be used in many applications; in my industry (windscreen repair and replacement services) 'glass' is a word that is relevant to our trade. One could argue that our business, glass for automobiles (or 'automotive'), is best described as 'auto glass'. The company, Autoglass have various marks registered to protect them against anyone using the 'auto' and 'glass' either separately - or together - in the relevant section / trade. IMO, Auto glass is descriptive given that the word is globally recognised as a description, but in the UK, it is better known as a company.
Autoglass (or their lawyers) work very hard to protect their brand. Perhaps if they were to apply for a trademark today, they would face similar problems as you (or your company).
HTH.
ETA: As Alex suggests, if you have been trading under that name for long enough, you could support your application that there is a public interest which recognises your brand.
I'm sure you have researched the rules and regs thoroughly; although you, yourself, may be convinced that the mark is unique to you and your trade, it is also worth remembering that the examiner's judgement is based on not only how the mark may restrict others from using that word, but also to protect you (or your mark) from any future infringement.
There is a company trading in my industry that have quite a 'descriptive' name (made up of two words). In my opinion, their mark no longer has any value to it as the 'word' is such a widely used 'phrase'. This particular company have such a recognisable household name as their brand, they have been trying to restrict anyone using the two words (that their brand is made up of) as two separate words.
It's a frustrating subject, but the rules are in place to protect all concerned.
Example: The word 'auto' is an abbreviation that can be used in many applications; in my industry (windscreen repair and replacement services) 'glass' is a word that is relevant to our trade. One could argue that our business, glass for automobiles (or 'automotive'), is best described as 'auto glass'. The company, Autoglass have various marks registered to protect them against anyone using the 'auto' and 'glass' either separately - or together - in the relevant section / trade. IMO, Auto glass is descriptive given that the word is globally recognised as a description, but in the UK, it is better known as a company.
Autoglass (or their lawyers) work very hard to protect their brand. Perhaps if they were to apply for a trademark today, they would face similar problems as you (or your company).
HTH.
ETA: As Alex suggests, if you have been trading under that name for long enough, you could support your application that there is a public interest which recognises your brand.
Edited by Glassman on Monday 19th November 10:22
I was refused "Speed Matters" on this basis in 5 out of 6 categories when I first applied.
We corresponded for a while and then took it to appeal. That appeal consisted of sitting in an office with a nice chap from the Patent Office and us explaining that although the terms could be interpreted as generic, they are recognised by an audience of hundreds of thousands over several years and that in our 'space' we had created sufficient recognition.
After some debate and evidence of our audience he agreed and overturned the decision and granted the trademark in all but one category.
That's all well and good, but you can still find that someone uses your trademark in a situation where you feel you have protected it, only to find that when seeking advice some professionals will then tell you that it'll be a tough case as it's a generic term. Made me wonder why I bothered sometimes! On reflection it was still worth doing though.
I've had good advice from Alexander Ramage Associates several times over the years.
We corresponded for a while and then took it to appeal. That appeal consisted of sitting in an office with a nice chap from the Patent Office and us explaining that although the terms could be interpreted as generic, they are recognised by an audience of hundreds of thousands over several years and that in our 'space' we had created sufficient recognition.
After some debate and evidence of our audience he agreed and overturned the decision and granted the trademark in all but one category.
That's all well and good, but you can still find that someone uses your trademark in a situation where you feel you have protected it, only to find that when seeking advice some professionals will then tell you that it'll be a tough case as it's a generic term. Made me wonder why I bothered sometimes! On reflection it was still worth doing though.
I've had good advice from Alexander Ramage Associates several times over the years.
Thanks for the responses. The vibe that I got from the hearing examiner was good, she seamed to agree with my points in that the term can describe something, but its not used in that sense. However, the letter following the hearing basically said the objection still stood, but implied that with evidence we could change their mind. I’m guessing this is the whole “proving we use it and are recognised for it” stuff. I had thought I had convinced her in the hearing, she said she would research it – did – and I think the main reason she objected still was because of an NVQ course covering “2D and 3D media”.
The mark is “2Dmedia” (all one word). When I put in the application, I put down every variant of spaces and case etc, not really knowing how it works. The mark I want is just as above, one word taken as a whole. Admittedly it refers to media of a two dimensional sense, we’re a web design and development company, so it applies to what we do. Don’t look at our website though, it’s about 3 years out of date – that’s another story, but don’t, its bad – too much real work, our new one is still in the works but only gets about half a day per month.
However, my argument is when has anyone (feel free to correct me here) ever called up a web design firm and said “I’d like some 2D media designed for my business” or referred to what we do as “2D media”. No one does, our customers don’t, in fact our name is a bit crap because we have to repeat it when giving it over the phone… no one gets it, but we have been trading with it for years, are established in our area with it, and haven’t thought of a better one. The only industry that does use the term that I am aware of is art and art photography – you can buy 2D media prints, and some art websites use the term – but that doesn’t clash with our classifications, so I don’t think that’s a problem.
If I’m fighting a loosing battle I won’t bother. The thing is, the main reason for registering it was to protect our logo/device which we spent ages to come up with and are really pleased with. They haven’t had any objections to the device.
Advice welcome… I’m happy to pay for a professional for an hours talk through, I just need to ensure my next move with the IPO is the right one, I’ve gone as far as I can doing it myself and feel I need some professional input.
The mark is “2Dmedia” (all one word). When I put in the application, I put down every variant of spaces and case etc, not really knowing how it works. The mark I want is just as above, one word taken as a whole. Admittedly it refers to media of a two dimensional sense, we’re a web design and development company, so it applies to what we do. Don’t look at our website though, it’s about 3 years out of date – that’s another story, but don’t, its bad – too much real work, our new one is still in the works but only gets about half a day per month.
However, my argument is when has anyone (feel free to correct me here) ever called up a web design firm and said “I’d like some 2D media designed for my business” or referred to what we do as “2D media”. No one does, our customers don’t, in fact our name is a bit crap because we have to repeat it when giving it over the phone… no one gets it, but we have been trading with it for years, are established in our area with it, and haven’t thought of a better one. The only industry that does use the term that I am aware of is art and art photography – you can buy 2D media prints, and some art websites use the term – but that doesn’t clash with our classifications, so I don’t think that’s a problem.
If I’m fighting a loosing battle I won’t bother. The thing is, the main reason for registering it was to protect our logo/device which we spent ages to come up with and are really pleased with. They haven’t had any objections to the device.
Advice welcome… I’m happy to pay for a professional for an hours talk through, I just need to ensure my next move with the IPO is the right one, I’ve gone as far as I can doing it myself and feel I need some professional input.
Here is what is on the paperwork they sent me.
Objections: Distinctiveness - Section 3 (1)
Next action: Suspend (months): 2
I know I now have to submit evidence... but what should I be submitting?
Objections: Distinctiveness - Section 3 (1)
Next action: Suspend (months): 2
Post Hearing consideration said:
I have carried out research on the Internet, and found a reference to 2D media with regard to art and use of a camera, which is not on a par with the services claimed for the application. However, there are abstracts referring to 2D and 3D in computer programming which would be analogous to the services claimed in classes 38 and 42, also referring to BTEC units which teach 2D and 3D design. Although the mark is '2Dmedia', the Internet hits demonstrate that 2D is a known term in the computing, designing trade. As acknowledged by Mr *, media is a weak part of the mark being a descriptive word, therefore I will maintain the objections raised against marks 1-5 of the series.
As discussed Mr * can provide evidence of distinctiveness acquired through use, and I attach notes on how to supply the evidence. The series objection can be addressed and those marks not subject to an objection be chosen for this mark to proceed.
Two months from the date of this hearing will be recorded for evidence to be supplied and the series objection resolved, or the series objection resolved and the mark to proceed for the representations that did not raise an objection.
Unit action: Please suspend for two months from 10.10.07 for above issues to be resolved.
The series I submitted consisted of about 19 marks I think, including 2Dmedia, 2D media... and versions with Ltd and Limited on the end. Marks 1-5 were the ones with 2Dmedia on its own, with a space, in caps, etc. I thought that you had to give them a big list of ways we wrote it, but since have found out that they all constitute separate marks. The one I wish to register is of course "2Dmedia" - they have not objected to "2Dmedia Limited" as a mark, but that's not really much use as a trademark anyway.As discussed Mr * can provide evidence of distinctiveness acquired through use, and I attach notes on how to supply the evidence. The series objection can be addressed and those marks not subject to an objection be chosen for this mark to proceed.
Two months from the date of this hearing will be recorded for evidence to be supplied and the series objection resolved, or the series objection resolved and the mark to proceed for the representations that did not raise an objection.
Unit action: Please suspend for two months from 10.10.07 for above issues to be resolved.
I know I now have to submit evidence... but what should I be submitting?
S a m said:
I know I now have to submit evidence... but what should I be submitting?
What you are looking for is examples of how you use the mark. These can include adverts (press, mags, trade press, yellow pages etc), invoices, shop/van signage, trade show displays, trade show attendance, sponsorship....pretty much anything that shows your goods/services being offered under or originating from the owner of the mark.Where possible you want to show the length of time the amrk has been used (so evidence from each year from when you first used the mark to when you applied to register) - preferably not a single instance from each year, but a continuous use throughout the time from first use.
You would also want to give evidence of the geographical extent - so trade shows in different parts of the country, invoices to addresses in different parts of the country, nationwide magazine ads etc.
Statements regarding the amount of money you have spent on advertising and your turnover in goods/services under the mark can also be useful.
As far as the series goes, it is possibly best to delete all the marks from the application, except the one you actually want to protect - you get protection for "the same or confusingly similar marks" anyway.
As Ted mentioned there will always be issues with enforcement of what can be regarded as weak marks, but without a registration you have nothing to even attenpt to enforce.
It has been a while since I studied Trade Mark Law so a quick consultation with an Attorney may be useful, but I suggest that you gather evidence and talk to the Examiner at the Registry as they may be able to provide useful guidance.
Good Luck
Alex
NB - all the evidendce must include the trade mark in the form for which protection has been sought - so "2Dmedia" (or possibly "2dmedia" ) - evidence that does not include that mark is not particularly useful.
Edited by AlexB on Monday 19th November 14:29
Edited by AlexB on Monday 19th November 14:30
Little money has gone on traditional advertising to be honest, hence a bit worried about making that too obvious... we generate business by referrals and strong organic search engine rankings for our services (which takes a lot of time and effort!). I believe this is a different approach to traditional marketing (big adverts in newspapers etc) and has worked very well for us.
We have however sponsored a Sunday league football team, put a lot of time into the search engine stuff, and have customers dotted all over the country... lots in Essex, but up to Scotland, down to Jersey etc.
Most of our clients sites bare our credit at the bottom, does that count for anything?
Is the evidence mostly geared up for monetary spend with the mark?
We have however sponsored a Sunday league football team, put a lot of time into the search engine stuff, and have customers dotted all over the country... lots in Essex, but up to Scotland, down to Jersey etc.
Most of our clients sites bare our credit at the bottom, does that count for anything?
Is the evidence mostly geared up for monetary spend with the mark?
As I said, it has been a while since I had to look into this, but I don't believe that money is a main issue.
You have to prove that through your use of the mark it has become a distinctive mark rather than being simply descriptive. Any use of the mark by you will help - bottom of websites, anything - just get as much evidence together as possible. Is there a trade body that govern/manage/oversee your industry? Statements from Trade Bodies that can back up your assertion that, in connection with the goods/services for which registration is sought, the mark 2Dmedia relates unambiguously to your company can be really useful evidence.
Hope that helps
Alex
You have to prove that through your use of the mark it has become a distinctive mark rather than being simply descriptive. Any use of the mark by you will help - bottom of websites, anything - just get as much evidence together as possible. Is there a trade body that govern/manage/oversee your industry? Statements from Trade Bodies that can back up your assertion that, in connection with the goods/services for which registration is sought, the mark 2Dmedia relates unambiguously to your company can be really useful evidence.
Hope that helps
Alex
Edited by AlexB on Monday 19th November 15:04
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