H
hlaw1234
- Original Poster
- #1
Hi everyone,
I've been researching and can't find the specific information or advice that I need- hoping someone on here can help please!
So, I'll try to spell this out as clearly as I can... without giving away actual business names.
My company sells forks and cutlery holders to bars and restaurants (B2B) and the business name is registered as "FighterForks" (one word) in the UK since June 2018.
There is another company in the UK that sells forks with carry pouches to consumers (B2C) "Fighta Forks" who are registered as a business partnership called "Fighta Partnership" in the UK.
In March 2019, we received a message via social media from "Fighta Forks" claiming that they had trademarked both "Fighta Forks" and "Fighter Forks". Upon checking the IPO database, we confirmed this wasn't true and proceeded to apply to trademark both "FighterForks" and "Fighter Forks" as a word mark to protect our business. Our application was approved.
"Fighta Forks" have since filed notice of threatened opposition to our trademarks and sent a cease and desist letter instructing us to cease trading.
We have discovered that they do have a trademark on the figurative mark of their logo, which is the words "Fighta" in a specific font design. This was approved in 2017, a year before our business name was registered. We could not find their trademark when searching the IPO trademark database as it is trademarked as an image and not a word. We also could not find their business registration online as they are a partnership and not a registered business.
Our trademarks are not identical, but they are similar, particularly phonetically as "Fighta" will be pronounced similarly to "Fighter". My understanding is that a figurative mark does not lay claim on the words within a logo, and therefore can't lay claim on the phonetics of that word. To trademark the words, a separate trademark application would have to be made. Therefore, the figurative mark "Fighta" does not have claim over the word trademark "Fighter Forks"? Is this correct?
Our product is not identical, but it is similar. Our fork designs are notably different (colour, shape, size), our purchase sizes are different (we sell in bulk, they sell in packs of 3) and we sell our forks with matching cutlery holders, while they sell theirs with cloth pouches. Both companies etch the words "Fighta" or "Fighter" respectively on to each fork, however in a different font design.
I would argue that these differences ensure that there is little risk of consumer confusion between our brands (no one could reasonably accidentally order 200 grey forks when they intended to buy 3 purple ones!) Furthermore, the two companies are selling to different consumer groups (B2B vs B2C) who have little to no overlap, further reducing the likelihood of consumer confusion and association between the two marks.
My "Fighter Forks" has many large deals with restaurant chains and is growing quickly, and the forks are seen by many members of the public every day in bars and restaurants. In contrast, "Fighta Forks" works on a much smaller scale, selling forks for individual and private use. Could I therefore argue that "Fighta Forks" is not widely recognised on the market for selling cutlery and therefore they cannot claim association between the two marks?
I'm feeling confident that I can win this if the other company do go forward with opposing our trademark- and from their letters, it seems likely that they will.
Any advice or direction on the above would be very much appreciated!
Have a great day.
I've been researching and can't find the specific information or advice that I need- hoping someone on here can help please!
So, I'll try to spell this out as clearly as I can... without giving away actual business names.
My company sells forks and cutlery holders to bars and restaurants (B2B) and the business name is registered as "FighterForks" (one word) in the UK since June 2018.
There is another company in the UK that sells forks with carry pouches to consumers (B2C) "Fighta Forks" who are registered as a business partnership called "Fighta Partnership" in the UK.
In March 2019, we received a message via social media from "Fighta Forks" claiming that they had trademarked both "Fighta Forks" and "Fighter Forks". Upon checking the IPO database, we confirmed this wasn't true and proceeded to apply to trademark both "FighterForks" and "Fighter Forks" as a word mark to protect our business. Our application was approved.
"Fighta Forks" have since filed notice of threatened opposition to our trademarks and sent a cease and desist letter instructing us to cease trading.
We have discovered that they do have a trademark on the figurative mark of their logo, which is the words "Fighta" in a specific font design. This was approved in 2017, a year before our business name was registered. We could not find their trademark when searching the IPO trademark database as it is trademarked as an image and not a word. We also could not find their business registration online as they are a partnership and not a registered business.
Our trademarks are not identical, but they are similar, particularly phonetically as "Fighta" will be pronounced similarly to "Fighter". My understanding is that a figurative mark does not lay claim on the words within a logo, and therefore can't lay claim on the phonetics of that word. To trademark the words, a separate trademark application would have to be made. Therefore, the figurative mark "Fighta" does not have claim over the word trademark "Fighter Forks"? Is this correct?
Our product is not identical, but it is similar. Our fork designs are notably different (colour, shape, size), our purchase sizes are different (we sell in bulk, they sell in packs of 3) and we sell our forks with matching cutlery holders, while they sell theirs with cloth pouches. Both companies etch the words "Fighta" or "Fighter" respectively on to each fork, however in a different font design.
I would argue that these differences ensure that there is little risk of consumer confusion between our brands (no one could reasonably accidentally order 200 grey forks when they intended to buy 3 purple ones!) Furthermore, the two companies are selling to different consumer groups (B2B vs B2C) who have little to no overlap, further reducing the likelihood of consumer confusion and association between the two marks.
My "Fighter Forks" has many large deals with restaurant chains and is growing quickly, and the forks are seen by many members of the public every day in bars and restaurants. In contrast, "Fighta Forks" works on a much smaller scale, selling forks for individual and private use. Could I therefore argue that "Fighta Forks" is not widely recognised on the market for selling cutlery and therefore they cannot claim association between the two marks?
I'm feeling confident that I can win this if the other company do go forward with opposing our trademark- and from their letters, it seems likely that they will.
Any advice or direction on the above would be very much appreciated!
Have a great day.
