[TROskell]

Hi

Just wondering if anyone else had been in a simlar situation to me. I was due to be goibg to the printers a couple of days ago to check my t-shirt designs as they were being printed, but a letter arrived from a solicitor advinsing me that cleint wasn't happy with may trademark application as they thought it was too similar to theirs. I am quite frustrated as before applying I paid for a preliminary search by the patent office, who had no problems with it then made my application and still no problems or possible clashes were flagged, then nearly at the end of its publication period this happens .

I have taken legal advice who have told me as the solicitor has sent me a letter rather than actually opposing the mark they want to negotiate. This company is much bigger than me so I can only take this so far before it is not worth it financially.

Any one else had similar problems?

 

[monkeylantern]

Bah! Bad luck. What were you trying to TM?

 

[CoolHandLuke]

They could be bluffing you? March on!

 

[monkeylantern]

Fight the good fight!

 

[BelHeirClothing]

VIVA LA TRADEMARK!

Fight the good fight!

 

[Rodney]

You'll have a much more expensive, longer road ahead if you have opposition to your trademark.

You're still sort of "starting out". It might be worth scrapping the name and selecting something else if it means it's going to take time/money away from you promoting your t-shirt line.

Then again, maybe the publicity of a david vs goliath type fight might help your t-shirt line launch. Depends on how similar the two names are I guess.

 

[CoolHandLuke]

Ya... what Rodney said... give us the juice! What's are the two names in conflict?

 

[TROskell]

Hi

I can't tell you that yet, you'll all be challenging it and I dont want to give the opposition any extra business. I had thought about what Rodney said and this might help with publicity, I think I will wait and see how expensive it is going to be. Trouble is the name is a key part why some people would want to buy the t-shirts. My solicitor has sent a letter out for me, trying to negotiate at the moment. The other companies solicitor has indicated that is wha they would rather do. I'll let you know what happens

 

[Comin'OutSwingin]

If the name is so close to the opposition that you would be giving them business, meaning people would associate the name with their product, I can see why they would have a problem with it.

Also you say that everybody would be challenging it. If this is the case you probably should have seen some type of opposition coming your way.

I want to make sure I understand the situation...You want to trademark a name that if you told what it was in this forum, you think others would want to challenge it, AND you think you would be giving a BIG company more business.

Is it possible that you got the idea for the name from the big company?

It seems contradictory to say that you want to trademark a certain name, but until you get the trademark, you don't want to tell publicly what that name is because you don't want to give the other, bigger, company any business. But at the same time want to trademark the name for your company. What do you think would happen IF you were granted the trademark? This is exactly what trademark laws are for. To keep the consumer from being confused in the marketplace. But it seems to me that you are trying to purposefully add to the confusion.

 

[TROskell]

Is it possible that you got the idea for the name from the big company?
.

definitely not.

I was joking when I said every body would be opposing it. I brainstormed loads of name ideas with my partner who thought of the name, it is a cut down version of a nickname rugby players are sometimes given. When I searched the trademark register myself I saw somebody else had a trademark which started with the same three letters, which is why I paid to have a preliminary search done by the patent office to make sure they had no problems with it. The preliminary search came through fine. My name is considerably different, the other party does not have a logo as I do, they have just registered a word. I applied for the trademark and again the patent office did not make any objections or site possible conflicts , I have aslo spoken to them since and they say they see no problem with it.

This is not a case off passing off as someone else. the other company is not well known.

 

[TROskell]

I am sorry but your comments have really annoyed me, when I have gone through all the correct channels. I don't want to give out the name of my trademark as there is currently a dispute about it and yes, I think if I mentioned the name of any company it is in dispute with people may check out their site. Your are entiltled to your opinion but I was hoping for a little more support rather than practically accusing me of stealing a name.

 

[Comin'OutSwingin]

I’m sorry if you are annoyed. But I didn’t accuse you of anything. Maybe you annoy easily. I merely asked a question and tried to get a clearer picture of what is going on. From the things you said, it seemed like you “may” have done what I asked. I didn’t know. That is why I asked.

I want to address some of the statements that you have made, though:

This company is much bigger than me so I can only take this so far before it is not worth it financially.

I guess you are saying that you were completely unaware of this company that is “bigger than me” before you wanted to trademark the name that is similar to yours? Okay, fine. But now you know that they exist, and that the name you want to trademark is so close to theirs, that you are afraid to say what “your” name is because “you” think it will give them more business.

I don’t want to give the opposition any extra business .

I fail to see how giving the name of “your” company is helping them if the names are so dissimilar. It seems that your apprehension about giving “your” name, because you think it will help them, validates their claim.

Think about how that sounds for a moment: “I want to trademark a name that is so close to a “bigger” company that I can’t tell the name that I want to trademark because I’m afraid it will give THEM more business.” Then you are annoyed if I ask if you got the idea for your company from the "bigger" company. Seemed like a logical question, given your statements.

So although you are annoyed, you need to see the whole picture. You want support. Fine. Fight them if you think you are right. I’m all for the little guy fighting for what’s right. But if you are conceding some things, like you think they will get business if you tell what your name is, then that could be a clue that maybe you shouldn’t be fighting.

Also, a little side note. You say that you have gone through the proper channels, paid for a preliminary search, the office had no problems with your application. Just because nothing came up on the search and no problems were found, doesn’t mean that your name isn’t too similar to another name and that the owner of the other name doesn’t have a claim.

I don't want to give out the name of my trademark as there is currently a dispute about it and yes, I think if I mentioned the name of any company it is in dispute with people may check out their site.

There is your answer from your own words. Even you think it’s so close that people will check out the site of the other company, if you give the name you want to trademark.

 

[TROskell]

Hi

I guess that was your apology then

 

[Comin'OutSwingin]

Hi

I guess that was your apology then

You are correct. I am sorry that you annoy so easily.

Take a step back and look at the whole picture is all that I'm saying. I know you are emotionally involved because you have put the effort in. But you need to be realistic about the situation. If you think others will associate the name you want to trademark with another company, why do you want to trademark that name?

 

[TROskell]

I think everybody must be bored with our rantings by now.

I don't think the trademark will be associated with another company, neither does my solicitor, but as with everything, someone else will disagree. (as you do with me)

 

[Comin'OutSwingin]

I think everybody must be bored with our rantings by now.

I don't think the trademark will be associated with another company, neither does my solicitor, but as with everything, someone else will disagree. (as you do with me)

I'm confused. That's what you said. You even gave that as the reason for not telling us the name you want to trademark. Have you changed your mind? You no longer feel that the name will be associated with another company? Then spill it. What's the name?

I'm not sure what you say WE disagree about. I have only responded to what you have said, and tried to get you to see the big picture. I don't recall disagreeing with what you said. YOU said that YOU didn't want to give the name of YOUR company because you didn't want to give them more business. I just said that if YOU think it will give them business that maybe it is too close. I didn't agree or disagree. I can't say that it is or isn't, but it seems that you are saying that because you are the one concerned about it giving them business.

So now, if you are saying that you don't think it will be associated, what's the problem with giving your name?

I'm really not trying to be a pain. I'm just trying to get you to see why the other company has sent you this letter. You seem to think that because you paid for a search, and the office didn't have a problem with your name, that everything should be okay, and I'm just trying to get you to see that there is more to it than that.

Just the fact that you made the statements before about what people will think if you gave the name you want to use, should tell you that someone has reason to send you a letter. Your name might be close, it might not be, but you thinking that this isn't fair isn't the way you should be approaching this.

Like I said before. Look at it as an outsider. Someone has a name they want to trademark. But for fear of giving another company business, they won't say what the name they want to use it. That's the KEY! That's the only reason I had questions. It is because of you saying that someone might think about the other company if they knew what your name was. I'm only saying that this is the purpose for trademarks. To avoid such things. And just because a trademark office sees no problem with it, doesn't mean there isn't a problem. Trademark registrations have been rescinded, because companies have won lawsuits based on exactly what you are telling us. That consumers are likely to be confused by the 2 names. It doesn't matter if one has a logo or not. The confusion part is what matters. Take a step back, please, and see the big picture.

 

[Rodney]

When I searched the trademark register myself I saw somebody else had a trademark which started with the same three letters, which is why I paid to have a preliminary search done by the patent office to make sure they had no problems with it.

Quick question about this part. The company that had the trademark which started with the same three letters as the one you were applying for: were they the ones that opposed your trademark?

If so, did you tell your solicitor and the patent office about this other company beforehand?

 

[tandami]

HI. I'm new to the board, thought I'd put in my two cents about this discussion.
First off, there is no reason to be soooo afraid of giving your pending trademark name, as all of that is public information. Have you checked the USPTO site? If gives ALL information, down to the address and fax number of the applicant. All we want to do is give you advice. Don't be so paranoid. We can't oppose your mark, unless your mark was similar to our mark. I'm sure we have not registered a mark like yours.
Secondly, here is some basic information regarding oppositions of trademarks. I've read alot about this, as I am currently in the process of trademarking my name. This information is from How to Register Your Trademark by Mark Warda.
There are companies that are hired to read the Gazette of the USPTO and inform businesses if someone attempts to register a mark similar to their own.
Someone opposing has two choices of action. One is, file a letter of protest with the Director of the Trademark Examining Operation, or he/she can file an opposition. If someone has filed an opposition against you, you should consult an attorney or do some serious research of the rules of practice in trademark cases, subsection 2.101 to 2.148 .

A letter of protest points out reasons why your mark should not be registered, such as another mark is confusingly similar or you are attempting to register a generic mark. This way, the person hopes to point out a serious enough problem with your app that it will be rejected by the USPTO.
An opposition is an action similar to a lawsuit between the parties that is brought before the Trademark Trial and Appeal Board. It is conducted just like a trial in the Federal District Court and is governed by Federal Rules of Civil Procedure.
A notice of oppostion (is this what you got?) may come from a large law firm, and include a threat of a lawsuit for infringement in Federal District Court. Sometimes this may be a serious threat and you may be advised to immediately cease using the mark. This is what the law firms want, but often the letter is a BLUFF.
Some companies dont want anyone to use any name which resembles their mark. However, they have no right to stop the use of a mark unless it LEGALLY infringes theirs.
Main issue to consider are whether the marks are indeed similar and confusing, whether the products are similar, whether the parties are dealing in the same channel of commerce, and whether or not there will be actual confusion. In 1996, there was a new factor, the Federal Trademark Dilution Act.

If there are enough dissimilarities you may want to HOLD OUT and FIGHT. If you are within your rights to register the mark, the other company that filed the opposition may not want to waste the money involved for litigation.

If you did get an opposition, the first step is to file an answer with the USPTO. It must be filed within 30 days or a default will be entered against you and your app canceled.

Anyways...the best way to respond to a threat is to send a letter (preferably through your attorney) saying that you recvd the letter, you don't wish to violate their rights, you are researching the law on the matter, and upon determining your legal status you will immediately do what is necessary to comply with the law. This will show that you have good faith, and will give you the opportunity to fight back if they are legally wrong or bluffing.

After your answer has been filed, you can file interrogatories on the other side, written questions that the opposing party must answer under oath. This will help you get info you need to decide if they have a good case.. this is so you can generate enough facts to show the opposers products are in a different field and that there will be no confusion between your products. It's also a good way to find out how serious a party is in fighting. If your questions require a lot of time to research years of records, they may decide its not worth the trouble. If they don't take the time to answer your questions or take further action on their oppostion, it may be considered abandoned. If they DO go throught the trouble to answer you, they are SERIOUS about the opposition and you can decide if you want to come to an agreement or give up the fight.

Hope this helps.
Dee Lovely

 

[Rodney]

Wow, nice first post!

:welcome: Dee

 

[TeeShirtSamurai]

TROskell,

I couldn't agree more with Comin'OutSwingin. He has made some excellent points and asked very legitimate questions that you have yet to answer.

Unfortunately, you have taken a lot of things he has said personally. This was not his intent.

The reason you made this post was to figure out if anyone else had a trademark opposed like you, right? Now whether this was to figure out where you should go from here, garner sympathy or because you were bored I don't know.

No one knows or can help you if you don't offer up information to further the discussion.