Trademark advice please

[Zmg]

Hi all,

I had a question re: trademarks that hopefully can be answered. I have an idea for a product and some searching quickly revealed that a similar product is already on the market using the exact name I wanted to use, this is unsurprising given that the name is essentially a description of the product.
Further investigation revealed said name is trademarked. Does this mean I am unable to produce a similar competitor product using the same name? This seem unjust, as without saying the exact name, the name is a generic description of the product, essentially it would be the equivalent of trademarking "red coat"

Can anyone shed some light onto this? I am obviously looking to avoid any possible litigation in the future.

Thank you!

 

[kulture]

Unfortunately details matter. I completely understand you not mentioning the name, but a proper answer can only be given knowing the name, the product and the market. You would be best served by going to a specialist and paying for professional advice.

 

[TomJ83]

I know that you're not keen to tell what specific product it is as you might have found a goldmine It would however be easier to help you if you could tell what category of product it is? Cars? Kitchen? Toys? Moreover I don't think a name based on a description of a product is catchy. I'm sure that you will come up with a better name if you do some brainstorming.

Also it's an interesting example you are giving. If a coat was named just "red coat" customers would not be so keen to buy it. That's why clothing retailers give their products cool or trendy names.

 

[Mr D]

What is unjust about someone paying money to trademark something then someone else claiming that is unjust because of how it describes the item?

 

[Zmg]

What is unjust about someone paying money to trademark something then someone else claiming that is unjust because of how it describes the item?

As stated above, without exactly stating the name, the trademarked name seems to be merely a description of the product and not a recognisable insignia to the company. Not looking to start a debate, just wanted to get some perspectives from people in the know.

 

[STDFR33]

Apple trademarked a iPhone and unsurprisingly, it's a phone.

I'm not sure I get where you are coming from?

 

[Zmg]

Apple trademarked a iPhone and unsurprisingly, it's a phone.

I'm not sure I get where you are coming from?

Essentially, using your example it would be like Apple trademarking "phone"

 

[Mr D]

Essentially, using your example it would be like Apple trademarking "phone"

And no one objected.

Turn your situation around.
If you had paid money for a trademark then some time later someone came along saying it was unjust about you doing that how would you feel?

 

[F_B]

Without knowing what the marks are it is difficult to comment.
However, trade marks are awarded to those who are first to file.
If a product is sufficiently new that it doesn't currently have a name then it can lead to that person being awarded a monopoly to the name of that product. Manuka honey is a good example of this.

At the time trade marks were filed nobody had heard of Manuka honey and the word was distinctive and non-descriptive of honey. Since Manuka honey was first sold in the UK, its popularity has boomed and many other suppliers have started selling "Manuka" honey.

It is up to the rights owner to enforce their registration. They may choose to do so or not to do so. Having been awarded the monopoly they are perfectly entitled to enforce it, however, this must be balanced with the fact that people must be able to describe their product. This hits at the heart of trade mark law.

If you use a word in a purely descriptive sense, and not as a badge of origin (i.e. in a trade mark sense) then you are not committing trade mark infringement.
E.g. to sell "MANUKA" honey would be an infringement as the word MANUKA is being used as a trade mark.

However, to sell "BOB's Honey, a honey exclusively sourced from the Manuka flower", is not an infringement as the word MANUKA in being used as a descriptor, not a badge of origin.

 

[surreyaces]

Are you looking to use the trade marked name as the name of your product, or are you looking to use it to describe what your product is?