Am I able to register a trademark that has 2 of the same words in the title?

[Businessamateu]

Young man about to start his own business.

I have a name for this business, and it's a really good name that leads to a double entendre.

I was going to trademark this name but can see a company that is in the same industry as me already uses two words of the same name.

For clarity I will give examples of the two names:

Already registered trademark - "Cherry Music Assembly"

The trademark I want to register - "The Extensive Music Assembly"

I don't know if this would be an issue at all and am looking for advice.

Many thanks

 

[fisicx]

It might or it might not. Depends on the words and how the IPO view the double entendre.

 

[Paul Kelly ICHYB]

Are there other 'Music Assemblies' registered? The more that are, the better the chance of success.

 

[AmazonGeek]

You can always apply and use the right start service, which is an extra £30. You pay half up front + the £30 and an IPO lawyer will take a look at it and let you know if the think there will be any problems. If they advise not to go ahead you find out pretty quickly and it costs you about £100.

Generally, they are looking at whether it will cause confusion amongst customers of the other brand. For example if you tried to register McDonalds Beefy Burgers then the answer would probably be yes. Customers of McDonalds would probably think there is a connection. In your case I would say no. They are not similar at all so I would expect that to get through.

 

[Karimbo]

You can always apply and use the right start service, which is an extra £30. You pay half up front + the £30 and an IPO lawyer will take a look at it and let you know if the think there will be any problems. If they advise not to go ahead you find out pretty quickly and it costs you about £100.

Generally, they are looking at whether it will cause confusion amongst customers of the other brand. For example if you tried to register McDonalds Beefy Burgers then the answer would probably be yes. Customers of McDonalds would probably think there is a connection. In your case I would say no. They are not similar at all so I would expect that to get through.

Applying without ensuring it's watertight comes with its issue

You apply for a trademark and have it granted, but then another trademark holder reckons the names are too similar and wants to cease and desist. You refuse because the UKPO gave you the green light and you bought the domain, liveried your vehcile, names your business and spent a fortune in SEO already. So now you have to defend yourself in court.

I beleive there is a guy in dragons den who got progains (prepped meal company) who got the trademark and maxi-muscle sued them for infringing their pro-gain supplement.

It is actually very difficult to say whether the OPs example violates or not. They;d need to link to the trademark granted and what their proposed trademark is. but they shouldn't disclose to the public your intended trademark because it goes out to the public domain and weakens the trademark claim.

I have been involved in a sector where Someone has a trademark for 1 of the words in a 2 word phrase for the same use class. And that TM troll has taken 500+ companies and got them to settle out of court for $5000 each.

under UK trademark rules, You cannot trademark generic words. Music Assembly is a generic phrase. If their trademark is Cherry Music Assembly, it is the cherry prefix that makes the generic music assembley unique. Therefore the whole 3 letter phrase is the trademark not part of the three words. You could have any other Apple Music Assembly without violating trademarks. However these are abstract examples and it's just a best guess.

 

[Karimbo]

Here is some detail:

Failed trademark: UK00003110533 for pro gains (class 29) by pro gains limited.

06 July 2016	Refused
21 September 2015	Opposed
19 June 2015	Application Published
15 June 2015	Pre-Publication
27 May 2015	Examination
27 May 2015	Application Received

Took 14 months from TM application to refusal. You need to check everything, make sure the application is foolproof. You should not just apply because then you might end up with opposition from big companies and you will need to lawyer up to defend it.

Progain guy should have done is due diligence, realise it sounds similar to an exisiting business and pulled out instead of spending time and money fighting an industry juggernaut in the courts.

It is a bit suspect how Maximuscle were able to persuade the IP office to refuse it.


Maximuscle parent company register progain in 1995 (class 5) UK00002029053
American company registers trademark progaine in 2021 (class 5). [trademark is registered and in force] UK00902341105

Then pro gains limited applies for pro gains in 2015 (class 29) [refused after objection]

It's interesting to me how prograine in the same class was acceptable, but pro gains from a different class wasnt. I guess it came down to both companies targeting the same audience. Fitness people which is where the issue was.

Anyway, that's just an interesting example to me of how you shouldn't just register a trademark, hoping the registration will give you the coat of armour to use the name. A poor aplication without suffient due diligence can create massive problems for you.

The owner of pro gains limited was in the press about the lawsuits and did change their name and eventually the business went under.

 

[Porky]

Personally, I wouldn’t go near it if it’s in the same activity class especially if the holder of the registered name is a big player and has cash reserves to go after you if they needed to.

A big brand will activity defend itself in these situations. Good luck to you but my advice is to pick a different name