Help! Someone is trying to trademark my company name!

[Stefanie]

I have been trading for a year and a half and just found out that someone submitted a trademark application for my company name/url. Strangely their application from January is still pending but what are my rights?

I have emailed the company involved and asked the to remove their application and explained why, but seriously ... why doesn't a limited company not trump a trademark?

We are sadly in the same space and so this would cause a lot of confusion.

Does anyone have any advice?

- My company is 'Let's Talk About Money'.

 

[Mr D]

Limited company means no one else can register another limited company with the same name.
It does not protect the name being used.

The name - not been used before? Sounds familiar from a while ago.

 

[MBE2017]

https://www.gov.uk/government/publications/trade-marks-fast-track

Contact the trademark organisation direct and object would seem to be the obvious course of action. Other than that, talk to a solicitor ASAP for your options. Having traded under the name helps a bit, but I think it also depends foe how long etc.

 

[Porky]

You should contact the Intellectual Property office and raise your objection to the mark.

You have asked them to remove their application and you could issue a cease and desist notice against them requesting they stop using your trading name.

The principle that’s established is when someone first used that mark.if you can prove that you were using the mark before the other party then that would bolster your argument for a C&D.

It is possible for two unrelated companies to have the same trade mark, in the same classes but normally you would agree to it.

You probably will need the services of a good Trade mark Solicitor if they continue and that will cost money.

Good luck

 

[Panoramix IP]

It doesn't look like the application has formally published yet. There may be grounds to file an opposition but you would need to do this within two months of the date of publication of the trade mark application. As it was filed in January but has not yet registered the applicant must be going through the process of responding to Examiner objections. It may be that the application does not proceed to registration. It is borderline descriptive.

There isn't really anything you can do at the moment. My advice is to keep an eye on it and speak to an IP lawyer as soon as you see that the application has published.

Don't send a cease desist letter as you will open yourself up to a groundless threats action against you. I won't go into detail in a public forum but I am happy to PM the reasons for this.

It will cost money to get the advice of an IP lawyer but choose carefully and it doesn't need to cost the Earth.

 

[Stefanie]

Thank you all for your weigh in. I have emailed the company that filed the application and asked them to withdraw tit. Maybe they didn't realised I had a company and the url for this, but I would be surprised if they hand't done their due diligence.

I will wait for their response and if they don't behave as I would hope, then I will contact those of you who said you could help. The comments were much appreciated!

 

[Stefanie]

Limited company means no one else can register another limited company with the same name.
It does not protect the name being used.

The name - not been used before? Sounds familiar from a while ago.

No, I don't think so? I am a small business financial coach and established in January last year.

 

[MOIC]

Have you trademarked your name?

(I understand you own the domain name, but that's a different thing altogether)

 

[Stefanie]

Have you trademarked your name?

(I understand you own the domain name, but that's a different thing altogether)

No ... but given now half a chance I will.

 

[Deleted member 59730]

why doesn't a limited company not trump a trademark?

Because a trade mark trumps a company name.

A trademark comes first in any business planning. Way before a company registration.

 

[MOIC]

No ... but given now half a chance I will.

Who advised you not to trademark your name?

Speak to @Kevin Hanson to see what your options are, he seems a willing person to discuss things with.

 

[Panoramix IP]

Who advised you not to trademark your name?

Speak to @Kevin Hanson to see what your options are, he seems a willing person to discuss things with.

Yes, happy to help.

 

[The Byre]

1. I could not find your URL so it can't be doing you much good!

2. That TM is almost certainly under 'examination' for being descriptive, so if they can't get it, you will not be able to either!

3. They are trying it on with descriptive TMs and have had 'What Matters Most' already turned down for the same reason - descriptive.

4. Reasons 1, 2 & 3 mean that your chosen TM is a turkey and ain't gonna fly. Save yourself a whole heap of hassle and TM your company name! But look at point 5 first, please!

5. As your company (companies) are dissolved, start a new one but do things properly this time! Begin with a decent TM that can fly, then get someone who knows what they are doing to build a simple gateway website, THEN you can form a company but avoid another partnership. Fly solo this time!

 

[Deleted member 59730]

As your company (companies) are dissolved, start a new one but do things properly this time! Begin with a decent TM that can fly,

Make up a word which does not come up on any Google search. Internet brand names are things like Zoopla and Alamy which were totally unique.

 

[SomeoneTookTheNameIWant!]

I TOO HAVE THIS ISSUE BUT THE OTHER WAY ROUND!!!

I had a TM7A form (Notice of Threatened Opposition) opened up on me yesterday, I know who it is and we both do have the same name.

The difference is I have TRADEMARKED the name but have't registered with companies house yet.

She has registered the name in Companies House but not trademarked the name.

Who's in the right as the business advice I got before starting was, trademark is the strongest thing you can do! I have fine combed the trademark journal using her name (No results) or the name (which only I appear).

PLEASE HELP :'(

 

[Mr D]

Sorry, what is the problem with the other person registering at companies house?

 

[fisicx]

She has registered the name in Companies House but not trademarked the name.

And?

Nothing wrong with them doing this. Has your trademark application been approved?

 

[SomeoneTookTheNameIWant!]

And?

Nothing wrong with them doing this. Has your trademark application been approved?

I am in the publishing phase of the trademark, which she can open an oppose.
I know there isn't anything wrong but can she oppose the name as I have trademarked it yet she hasn't shes trading under the name.

 

[SomeoneTookTheNameIWant!]

Sorry, what is the problem with the other person registering at companies house?

She is basically getting me to revoke my trademark application even though the name is available on there as she hasn't registered the name on the UKIPO

 

[Mr D]

She is basically getting me to revoke my trademark application even though the name is available on there as she hasn't registered the name on the UKIPO

Which she could try without registering at companies house.

Lots of businesses don't register limited companies.

 

[MOIC]

Who's in the right as the business advice I got before starting was, trademark is the strongest thing you can do!

Trademark is more important.

You can have any company name t/a YOUR TRADEMARK.

If you are unsure what to do, employ a professional to guide you. @Kevin Hanson advertises his services on here and seems to be the man you want to speak to at the moment.

Professionals charge . . . . . .

 

[fisicx]

I am in the publishing phase of the trademark, which she can open an oppose.
I know there isn't anything wrong but can she oppose the name as I have trademarked it yet she hasn't shes trading under the name.

If course she can oppose. That’s all part of the trademark process. Whether she succeeds or not is up to you.

 

[The Byre]

It ain't all that simple! TM does not always trump a company name! The opposition must give reasons for the TM7 and then you must either withdraw your application or give reasons why you do not agree with their opposition on a TM8.

Don't waffle! Don't use polemic or otherwise be irrelevant. A good defense would be "Claims of previous use of the name are untrue and unfounded because of XXX." Supply proof is any is available. If in doubt then an IP lawyer is your best bet.

The procedure is logical and a step-by-step one as laid out here - https://assets.publishing.service.g...oads/attachment_data/file/358769/oppoaiti.pdf

IP law and TM law is never simple. If for example, you have knowingly 'kidnapped' a TM that was already being used then that could be legitimate grounds for opposition.

Perhaps @Kevin Hanson would like to chip in here.

 

[SomeoneTookTheNameIWant!]

Which she could try without registering at companies house.

Lots of businesses don't register limited companies.

we are both using the same name.

She has registered it on companies house as a limited company.

I have registered the name on the UKIPO.

 

[fisicx]

Pay for legal help. This will be case of whoever has the best lawyer wins.

 

[Mr D]

we are both using the same name.

She has registered it on companies house as a limited company.

I have registered the name on the UKIPO.

Yes we get that.

 

[Panoramix IP]

Trademark is more important.

You can have any company name t/a YOUR TRADEMARK.

If you are unsure what to do, employ a professional to guide you. @Kevin Hanson advertises his services on here and seems to be the man you want to speak to at the moment.

Professionals charge . . . . . .

Thank you - yes, feel free to PM me and I can at least you give you some pointers.