Received notice of threatened opposition Form TM7a for my trademark

[davekar]

I applied for a trademark and received an email from the IPO with a Notice of Threatened Opposition from a company in the US via a London patent and trademark attorney.

The Notice said: "I confirm that I wish to file this notice of threatened opposition and that a copy should be sent to the Trade Mark applicant. The letter from the IPO says it is directed against the entire application."

Now comes the funny part. Not only did the IPO accept my application not finding any similar trademarks but the search in TMDN database prior to filing my application never showed any signs of that particular American company having trademarks in any country in the world - not in the US, not in Australia, nowhere.

The word that I'm using for my trademark is only taken by just one company in a very different classes and it is not them opposing, of course.

I'm kind of confused how an American company can file for an opposition for a UK trademark while not having the same trademark registered not only in the UK but in the US as well. What should I do in a case like this?

 

[James Akcela]

I would consult an IP lawyer, that is what they are paid for.

I know a very good fellow in Norwich, who I have coffee with occasionally, who I would highly recommend, Vision Assets. I don't work on commission by the way, before anyone would suggest such a thing.

 

[LawHound]

This is a regular occurrence, some oppositions are valid many are not. You need to take advice on it and discuss your options. Happy to discuss if you DM me.

 

[Panoramix IP]

Happy to discuss with you if you are interested. I practice trade mark law in the UK and US. The letter you received is only a notice of threatened opposition. It doesn't mean that the American company will file an opposition and there isn't really anything to be done unless they do actually file an opposition. I would say sit tight and wait for them to file the opposition - they have a month to do so from the end of the opposition period.

 

[davekar]

Kevin, I'm already discussing this matter with another attorney, I guess it would be polite and out of respect not to switch to another one for now but thank you for your offer anyway.
I guess now I just have to wait for their next move and see what they have

 

[Panoramix IP]

Out of interest, did the US company file an opposition against your trade mark? The time period for doing so would now have passed.

 

[davekar]

Out of interest, did the US company file an opposition against your trade mark? The time period for doing so would now have passed.

looks like they did, the database has been updated, so now I guess I have to wait for the official TM7 letter

 

[Porky]

Hi

Some companies especially the bigger brands in the USA will be ruthless in protecting trade marks. They pay legal firms fees just to monitor activity and have money set aside for legal fees for defending.

I had a similar situation a few years ago against one of my brands and ultimately it cost me a few grand in solicitor fees to defend it. Yet in my case the name wasn’t exactly the same (I can’t go into detail) and mine was in different classes - you couldn’t make it up! However, they felt it was an infringement and I was asked to withdraw.

When your solicitor gets the details you will know more. In my case I agreed that my brand was being used for a certain purpose and I wasn’t in any way “passing off”. Ultimately we reached agreement.

However, they could of taken me to the high court and whilst I was absolutely confident of winning, fees recoverable etc, the reality was that if they had gone for it taking it to the next level, I would of withdrawn my trademark - I was simply in a position where it was one thing paying out a few grand but another risking possibly tens of thousands in court and legal costs.

Moral to the story is that “fat wallet wins” imo hopefully for you they will take a realistic approach and your solicitor can cover it off but if not a big brand can crush you. Others may disagree but that’s how I see it.

Good luck

 

[davekar]

in my case they don't even have a trademark registered anywhere in the world, yet they demand I have to withdraw my application. so ridiculous

 

[Root 66 Woodshop]

If they don't have a trademark get yours in place NOW and reply with F off... you stop using MY registered trademark!

 

[obscure]

in my case they don't even have a trademark registered anywhere in the world, yet they demand I have to withdraw my application. so ridiculous

They don't have to have a registered trademark. They may have an unregistered trademark and can sue you for passing off.