Trade Mark licensing?

[Lucan Unlordly]

I should probably know this, having registered a trademark myself and read many threads here on UKBF but this question is from a different angle.

I run an online service, the software for which performs a particular function for subscribers.

An as of yet unknown competitor is marketing the launch of an identical product. Thus far they have made just one post on a couple of social media channels. No trademark name protection, no limited company registered and only a dot com web address stating their intentions.

If I register the the trademark, a limited company, and the .co.uk web address retrospectively, would I be able to prevent them from using the same?

 

[Gecko001]

Do search engines take much notice of website addresses? Maybe some of the IT people here would answer this better, but I suspect they do not.

Also, oldies like me might use the website address to find a site, but I am probably one of the very few.

 

[Lucan Unlordly]

Do search engines take much notice of website addresses? Maybe some of the IT people here would answer this better, but I suspect they do not.

Also, oldies like me might use the website address to find a site, but I am probably one of the very few.

The domain name in question is a generic term for the very niche market it serves. We use it for a feature in our business but preceded by a trademarked name.

Not the real names but for example, we use the term 'Wally's Goat Shaver' and they've registered the domain 'goatshaver.com'

I want to register the goatshaver.co.uk domain name, trademark the term 'goatshaver' and set up 'Goatshaver Ltd' but am seeking confirmation that I can do all 3 despite there being the embryo of a business using the name?

I want to clip their wings!

 

[DontAsk]

I would just do it and see what happens. Domains and Ltd setup can be cheap. The trademark will cost a lot more, but you should find out if you can have it as part of the process.

 

[Lucan Unlordly]

I've started the registration process for the Trademark and secured the .co.uk Domain name.

A shout out for the IP customer service line. It took me 3 minutes to get through on the phone and less than 10 minutes to have all my questions answered.

It takes me 45 minutes - before I give up - trying to contact my GP!

 

[Porky]

Two things:-

1. Registration - Nothing to stop you registering the "goat shaver" term with the IPO in the classes you operate it. If they accept it, list it and its not objected to in the advertised period its yours.

2. Enforcement - This is more tricky and costly. Issue a C&D to company B for using your trademark they might cease to use it but if they can prove they were aleady using the mark prior to you then not so easy. That's where a battle can get costly and ugly.

Its always the .com version you want, if its available and not owned by someone else I would register it. If the .com version is the mark you are trying to register and its already in use then they could probably argue they have been using the mark previously - that's the burning question is there a website in existence or historically that uses that mark?

 

[Lucan Unlordly]

1. Registration - Nothing to stop you registering the "goat shaver" term with the IPO in the classes you operate it. If they accept it, list it and its not objected to in the advertised period its yours.

.........as per last post, I've already done this. I understand that objection will require them to keep an eye on the IPO Journal in order to dispute my application. They haven't registered the mark so I doubt they are thinking along the same lines as me.

2. Enforcement - This is more tricky and costly. Issue a C&D to company B for using your trademark they might cease to use it but if they can prove they were aleady using the mark prior to you then not so easy. That's where a battle can get costly and ugly.

They have holding pages on social media with no detail other then the word concerned and direction to a website with some teasers as to their intentions. 99% of which is to replicate our current offering. I can claim use of the word, words for several years albeit preceded by a brand name for which I already own the trade mark and have done for many years.

Its always the .com version you want, if its available and not owned by someone else I would register it. If the .com version is the mark you are trying to register and its already in use then they could probably argue they have been using the mark previously - that's the burning question is there a website in existence or historically that uses that mark?

Again, as per last post. I've registered .co.uk, they have .com We have been using the generic term as 2 words 'goat shaver' but have registered the trade mark 'GOATSHAVER' which we've used on merchandise and social media since 2018.

 

[Lucan Unlordly]

That's where a battle can get costly and ugly.

This will unfold as the big guys versus a little guy....... and may fall in our favour?

I have 2 close relatives that work in the legal profession for companies in the upper echelons of the Fortune 500 dealing specifically with international branding. Plus a contact, a Lawyer who's taken on the mob I think are behind this twice before - pro bono - and won.

 

[Porky]

Good luck to you anyhow

If they have the .com version of your proposed mark, look on whois to see when it was first registered- if that registration pre-dates you then there is risk they had use of the trade mark before you.

That being said irrespective, if you end up issuing a C&D and they just roll over then job done

 

[Lucan Unlordly]

Good luck to you anyhow

If they have the .com version of your proposed mark, look on whois to see when it was first registered- if that registration pre-dates you then there is risk they had use of the trade mark before you.

That being said irrespective, if you end up issuing a C&D and they just roll over then job done

.com was registered in 2023 but they only started using it a few weeks ago and cannot claim that my trade mark application is 'passing off' as I've used the combined word for several years - as far back as 2018

 

[AmazonGeek]

You normally can't trademark a term if it describes the product or service itself. And for this very reason - it would stop other people doing the same thing and advertising it.

Think Apple - they can trademark it for what they do, but they couldn't if they were selling apples! The same for Egg - it used to be a credit card years ago and was trademarked for that. But if you are a farmer selling eggs, you can't use the 'Egg' trademark for your product.

 

[AmazonGeek]

1. Registration - Nothing to stop you registering the "goat shaver" term with the IPO in the classes you operate it. If they accept it, list it and its not objected to in the advertised period its yours.

Not if you are selling a goat shaver. You cannot trademark a term if it describes the product, since this would effectively stop other people selling the same product.

 

[Lucan Unlordly]

Not if you are selling a goat shaver. You cannot trademark a term if it describes the product, since this would effectively stop other people selling the same product.

The 'product' is software and the term if used is made up of 2 words, which we've combined into one. However, that term is not descriptive of what the software does, rather it describes what it is.
The term we are trying to trademark was championed by us and is not what 99% of our audience would use to refer to the process.

I'm struggling to think of an appropriate analogy but the best I can come up with is for an imaginary Car Wash, combined to read Carwash - which would not be usable, but 'Carwasher' maybe?

 

[Lucan Unlordly]

UPDATE:
The Trademark has been accepted for publication which I assume means it's been looked at and overcomes the initial hurdle as to whether it's a permitted 'term'?

Can anyone confirm that the process of publication does not include the IPO going out of their way to contact those likely to oppose the registration? That anyone doing so would have to be actively searching the Journal?

 

[Ozzy]

Can anyone confirm that the process of publication does not include the IPO going out of their way to contact those likely to oppose the registration?

Can confirm.

Although, there are services out there that provide monitoring services to alert folks who choose to have such a service. So if someone has such a service in place, they may get informed.

 

[Lucan Unlordly]

Can confirm.

Although, there are services out there that provide monitoring services to alert folks who choose to have such a service. So if someone has such a service in place, they may get informed.

Thanks Ozzy......

I'm struggling to find out if the potential opposition is a well funded organisation or a random chancer. That said this is one of the areas overlooked by many irrespective of size.
A bit early to type up a cease and desist letter but fingers crossed!

 

[Lucan Unlordly]

UPDATE: We managed to secure the word as a trademark without objection and are now planning the next move.
Whoever is trying to tread on our toes has made no further progress with their online presence but they are now formally presenting themselves using our trademark on social media. I don't think the time is right - I'll let them come out of the shadows and spend a few quid on branding first - but can anyone advise the process and the simplicity, or otherwise, of getting Facebook, Instagram etc., to remove their holding pages when the time comes?

 

[Ozzy]

but can anyone advise the process and the simplicity, or otherwise, of getting Facebook, Instagram etc., to remove their holding pages when the time comes?

Generally speaking, if you create a Business Profile on META you then have the tools to upload and details your trademarks, etc.
They then give you the tools to approve which pages and accounts are allowed to use your trademarks, and all others are not.

I don't know the exact process exactly, but I have seen the tools when managing UKBF's business profile on there.

 

[Allen_Bernier]

You’ve done the hard part by securing the trademark. Once you’re ready, Meta’s brand protection tools make takedowns pretty straightforward since you can upload your trademark and report any pages using it without permission.

 

[Lucan Unlordly]

UPDATE: The plot thickens.......

The trademarked name has been dropped by the 'opposition' and amended to one that does not conflict. However, they've laid their cards on the table as to how their product will work and have based it on the one part of our site that was particularly developed in a way that will give us some intellectual property rights.

 

[Lucan Unlordly]

UPDATE: The plot thickens.......

The trademarked name has been dropped by the 'opposition' and amended to one that does not conflict. However, they've laid their cards on the table as to how their product will work and have based it on the one part of our site that was particularly developed in a way that will give us some intellectual property rights.

UPDATE:

In my post above I suggested they may revert to another name but they have now launched using our approved wordmark. They have also filed an application for the same in a category that on hindsight I may have added to the list, but that is unlikely to be approved for use in our market, if at all. I have legal representation preparing appropriate opposition and a very strong case.

One benefit of taking proper advice is that we have now identified additional copyright within our offer that they will be compromising if they try to follow our lead. It's my view that it will be impossible for them not to do so.

Watch this space.

 

[Lucan Unlordly]

PS: The launch of the oppositions product thanks an individual - who is a key figure within one of our user clubs - for their help in development. Their access to our product has been temporarily blocked, pending legal advice and further investigation.

Does anybody see our actions as problematic?

 

[Lucan Unlordly]

UPDATE:

In my post above I suggested they may revert to another name but they have now launched using our approved wordmark. They have also filed an application for the same in a category that on hindsight I may have added to the list, but that is unlikely to be approved for use in our market, if at all. I have legal representation preparing appropriate opposition and a very strong case.

One benefit of taking proper advice is that we have now identified additional copyright within our offer that they will be compromising if they try to follow our lead. It's my view that it will be impossible for them not to do so.

Watch this space.

Minor update:

For a page that is solely for UK organisations that has been live for around 2 weeks they are now claiming fantastic responses to challenging situations by way of pictorial testimonials allegedly penned by user clubs and individuals but who's clubs are in the US!

You couldn't make it up!