Letter of undertaking - paragraph

[ConnietheCoton]

Hello,

A law firm in the UK representing a US .com company demanded, several months ago, that I withdraw my trade mark application (which I have done) and sign a Letter of Undertaking. After guidance I recognised an overly punitive paragraph, so I contacted the firm to query this paragraph on at least two separate occasions before the deadline, but the law firm has not responded other than with a "I note your email... and will respond very shortly." message.

The deadline for signing has now expired, and still no correspondence from the law firm. On all occasions my emails had another representative from the firm copied into the message.

What might be the repercussions for having not returned a signed copy of the undertaking before the deadline?

Anyone else had experience of such a situation?

 

[obscure]

There is no law that requires you to sign the letter.... they were simply asking/negotiating. Any consequences from you failing to sign will really depend on the details of the situation, which you haven't told us.

If you were infringing their trademark they might decide to take action. Alternatively if they were just a big company trying to bully a smaller one into not using a trademark that was vaguely similar then it is unlikely they will bother to do anything.

 

[ConnietheCoton]

Thanks Obscure.

As I'm now going to take this as an opportunity to rebrand then there should be no further reason for them to have issue with me.

Once again, thanks for responding.

 

[obscure]

As I'm now going to take this as an opportunity to rebrand then there should be no further reason for them to have issue with me.

They don't need further reason. If you infringed their trademark it doesn't matter if you then stop. An infringement has occurred and they might decide to sue. Hopefully they won't but they may.

 

[DontAsk]

They were objecting to an application so I don't think any infringement could have taken place.

 

[obscure]

Did you use the mark prior to applying to register it?

 

[ConnietheCoton]

Did you use the mark prior to applying to register it?

Apologies for the delay. Yes, it was used on Facebook business page, Twitter, a pavement sign and advertising literature, as well as on Yell.com.

 

[The Byre]

Reading between the lines, the dot-com spent an entire £60 or thereabouts on one solicitor's letter, enclosing a document that they had anyway for just such an eventuality.

You replied and the solicitor forwarded that to the client and they decided to do nothing - the threat had worked, so why bother? With no instruction from the client and no prospect of further earnings and work, the solicitor did not and indeed cannot reply.

As an old German saying goes "Trap closed: the monkey is dead!" (Klappe zu. Affe tot!)