- Original Poster
- #1
Hi, I hope this is the right place to post in.
We have been in a trademark battle where we have attempted to get a wordmark for our brand registered. I'll swap out our actual name with a made up name as the issue is ongoing but I'm hoping someone could offer some advice/thoughts on this.
We've attempted to trademark our business name 'Happy Nutrients' as a wordmark in Class 5 (we sell health supplements). We were apposed by a large company who hold the image trademark for 'Happy' in Class 5 amongst others (they manufacturer health supplements).
We argued our case that there wouldn't be confusion between 'Happy Nutrients' and their trademark image 'Happy'. However the decision, although very close went against us and so we were unable to trademark the word mark 'Happy Nutrients' in Class 5.
During this lengthy process we were able to trademark our image mark which is a graphic of a heart plus the words 'Happy Nutrients'.
We have now been sent an email from the oppositions trademark attorney do the following:
1. Cease use of using the sign 'Happy Nutrients' for advertisement, on products, leaflets, websites, social media etc
2. Immediately change the registered company name 'Happy Nutrients'
3. Immediately transfer domain name 'Happynutrients.com' to the opposition
They don't mention our image mark trademark.
So I have some questions:
1. Are we sitting ducks without any hope?
2. Is that email simply scare mongering or are they fully in the right to make such demands? They are essentially saying stop using 'Happy Nutrients' anywhere, and sign over any web domains to them.
As mentioned we own the trademark of our logo mark (image mark) which contains the words 'Happy Nutrients'. The opponent do not own the word mark of 'Happy', only the image mark which contains the word 'Happy'. During the trademark process it was decided that their image mark most dominant feature was the word 'Happy'.
Any help, advice, thoughts would be appreciated!
Thanks, Matt
We have been in a trademark battle where we have attempted to get a wordmark for our brand registered. I'll swap out our actual name with a made up name as the issue is ongoing but I'm hoping someone could offer some advice/thoughts on this.
We've attempted to trademark our business name 'Happy Nutrients' as a wordmark in Class 5 (we sell health supplements). We were apposed by a large company who hold the image trademark for 'Happy' in Class 5 amongst others (they manufacturer health supplements).
We argued our case that there wouldn't be confusion between 'Happy Nutrients' and their trademark image 'Happy'. However the decision, although very close went against us and so we were unable to trademark the word mark 'Happy Nutrients' in Class 5.
During this lengthy process we were able to trademark our image mark which is a graphic of a heart plus the words 'Happy Nutrients'.
We have now been sent an email from the oppositions trademark attorney do the following:
1. Cease use of using the sign 'Happy Nutrients' for advertisement, on products, leaflets, websites, social media etc
2. Immediately change the registered company name 'Happy Nutrients'
3. Immediately transfer domain name 'Happynutrients.com' to the opposition
They don't mention our image mark trademark.
So I have some questions:
1. Are we sitting ducks without any hope?
2. Is that email simply scare mongering or are they fully in the right to make such demands? They are essentially saying stop using 'Happy Nutrients' anywhere, and sign over any web domains to them.
As mentioned we own the trademark of our logo mark (image mark) which contains the words 'Happy Nutrients'. The opponent do not own the word mark of 'Happy', only the image mark which contains the word 'Happy'. During the trademark process it was decided that their image mark most dominant feature was the word 'Happy'.
Any help, advice, thoughts would be appreciated!
Thanks, Matt
