- Original Poster
- #1
I am trying to register a text trademark and made my application using the Right Start option. I have just heard back from the IPO and they have picked me up on a number of points.
1. Specification too wide; I should be able to sort this by removing some of the Class specifications and being more specific on the others.
2. Specifications not understood; Again, I should be able to sort this by being more specific.
3. Search for earlier trademarks; She says that in her initial view that the trademark and goods we are wishing to register are like an earlier trademark and goods. Therefore, the public are likely to confuse our trademark with the earlier one. She is not refusing to accept my application but is making me aware of the earlier trademark and that she is obliged to inform the trademark holder that our application will be put on the online journal. She then goes on to say she is only obliged to notify UK and International registrations (WO) trademarks. She then says she will not notify holders of EUTM or EU which also have protection in the UK. The earlier trademark she has found is an EU trademark. The trademark I am trying to register is like “XY Wood Crafts” (this is not the actual mark but a similar example) for classes 7, 14 & 19 with areas relating to Wood Crafts and the earlier trademark she is taking about is “XY” for classes 2, 7, 9 & 37 covering a very large range of areas mostly relating to printing but from what I can see none relating to Wood Crafts. The “XY” in both above relate to just two letters in the trademark not a name.
My Question are;
1. Will she inform the earlier trademark holder as it is a trademark ID of EU and Domain EUTM and if she doesn’t how will they know?
2. If they do object it says if I lost I would be liable for legal costs. All I am trying to do is protect a trading name so if they did object would it be possible to withdraw the application and not incur any more costs other that the registration fee?
3. Do you think if I change my trademark application to “XYWood Crafts” would it make it less likely they would be able to object?
Thanks
1. Specification too wide; I should be able to sort this by removing some of the Class specifications and being more specific on the others.
2. Specifications not understood; Again, I should be able to sort this by being more specific.
3. Search for earlier trademarks; She says that in her initial view that the trademark and goods we are wishing to register are like an earlier trademark and goods. Therefore, the public are likely to confuse our trademark with the earlier one. She is not refusing to accept my application but is making me aware of the earlier trademark and that she is obliged to inform the trademark holder that our application will be put on the online journal. She then goes on to say she is only obliged to notify UK and International registrations (WO) trademarks. She then says she will not notify holders of EUTM or EU which also have protection in the UK. The earlier trademark she has found is an EU trademark. The trademark I am trying to register is like “XY Wood Crafts” (this is not the actual mark but a similar example) for classes 7, 14 & 19 with areas relating to Wood Crafts and the earlier trademark she is taking about is “XY” for classes 2, 7, 9 & 37 covering a very large range of areas mostly relating to printing but from what I can see none relating to Wood Crafts. The “XY” in both above relate to just two letters in the trademark not a name.
My Question are;
1. Will she inform the earlier trademark holder as it is a trademark ID of EU and Domain EUTM and if she doesn’t how will they know?
2. If they do object it says if I lost I would be liable for legal costs. All I am trying to do is protect a trading name so if they did object would it be possible to withdraw the application and not incur any more costs other that the registration fee?
3. Do you think if I change my trademark application to “XYWood Crafts” would it make it less likely they would be able to object?
Thanks
