Trademark query

[stephc]

Hello!
I'm new to this forum so please bear with.
I am in the process of applying for a trademark for my business, as someone else has started to use the same name and operates in the same arena. Let's pretend the company is called The Big Dish Company. I would like to trademark "The Big Dish Company" and "Big Dishes".

Question 1 - Are these similar enough to be classed as a 'series' or would they need to be two separate applications?


Question 2 - A trade mark already exists for "Big Dishes", and includes a class which I am including in my application. I know that two trademarks can exist within the same class as long as they are for different products. I have also been told though, by the IPO, that a couple of months ago a new rule came in that said you can't use generic terms like "Goods made of wood", you have to specify what the actual goods are else it is deemed too vague and indefensible. The owner of the existing trademark registered the trademark before the new rules about not being too generic though and therefore has "Goods made from..." listed in his terms. The terms I have listed are a subset of this e.g. wooden dishes. Does this mean that my application could be rejected because of an overlap? Or would they consider the fact that the term used by the other Big Dishes company is now considered too encompassing?


Thank you!

 

[mhall]

In terms of the series - Probably not but send it in anyway. If they do not consider it a series they will write to you and ask you to remove one of the marks - It won't cost you anything to do and it just halts your application for a couple of weeks. I did this with two trademarks that I considered a series but they didn't - and the only difference was that one was an abbreviation of the other ( eg: Eggs of Yorkshire and Eggs of Yorks)

In terms of the Class- I just copied and pasted the class description but it was similar to another mark. They just told me that they would write to the other person to give them a chance to object - but as I owned the other mark as well they just sent me a letter asking me if I wanted to object to my own new mark

 

[Trademarkroom]

Good advice. However it is unlikely in my view to be accepted as a series.

Your application will not be rejected just because there is a similar mark for similar goods and services with earlier rights. The UKIPO will write to them and the emphasis is then on the owner of the earlier mark to oppose if they feel your mark is confusingly similar. If may well be at that point that you can negotiate with them so you can both happily co-exist if you have both established you are in different market places and the earlier right owner is satisfied with that.