Trademarking a name that's in the public domain

[mgb]

Hi all

Would appreciate some advice.

I am launching a product/service that is titled with the name of a story/character. The original work is firmly in the public domain and there are no movie/merchandise rights assigned. Disney and the likes are 100% not involved as it's quite an obscure work.

Don't want to give too much away for obvious reasons so am using an invented example here.

Let's say that my product will be called THE THREE LITTLE PIGS.

So step 1 I have checked that no-one has "THE THREE LITTLE PIGS" or similar trademarked.

One company does have "THE THREE LITTLE PIGS: DUCKPOND FRIENDS" trademarked. They do have some of the same classes that I want.

So question 1 is, is there any chance of me getting the broader term when someone has already registered a more specific variant?

Question 2 is, is there any chance of me getting this in the first place, given that the name is the name of a story or character that is broadly known and is from a historic book/story?
(I originally throught the answer to Q2 was that there's no point. However the fact that someone has registered a similar mark made me wonder)

I guess that I should be ok registering my logo, but I'm unsure whether registering the wordmark is a complete waste of time & money?

Thank you

 

[Mark T Jones]

It depends how similar your example is - i suspect 3 little pigs would be rejected simply because the term itself is in common usage

 

[Newchodge]

Hi all

Would appreciate some advice.

I am launching a product/service that is titled with the name of a story/character. The original work is firmly in the public domain and there are no movie/merchandise rights assigned. Disney and the likes are 100% not involved as it's quite an obscure work.

Don't want to give too much away for obvious reasons so am using an invented example here.

Let's say that my product will be called THE THREE LITTLE PIGS.

So step 1 I have checked that no-one has "THE THREE LITTLE PIGS" or similar trademarked.

One company does have "THE THREE LITTLE PIGS: DUCKPOND FRIENDS" trademarked. They do have some of the same classes that I want.

So question 1 is, is there any chance of me getting the broader term when someone has already registered a more specific variant?

Question 2 is, is there any chance of me getting this in the first place, given that the name is the name of a story or character that is broadly known and is from a historic book/story?
(I originally throught the answer to Q2 was that there's no point. However the fact that someone has registered a similar mark made me wonder)

I guess that I should be ok registering my logo, but I'm unsure whether registering the wordmark is a complete waste of time & money?

Thank you

Is the story/character out of copyright?

 

[cjd]

Copyright lasts for 70 years after the author's death.

Assuming that has expired along with it's author, the registered mark of the other company operating in the same class would leave you open to a fairly straightforward challenge.

 

[mgb]

The work is definitely out of copyright. Apologies, that's what I meant when I said in the public domain but I realise that wasn't entirely clear.

The existing mark is essentially the name I want but with a tagline. Think "Star Wars: The Clone Wars" or "Spider-Man: Far-from-home" and the mark I want is "Star Wars" or "Spider-Man".

Obviously it's not my work originally, but the classes I want are fairly niche and not related to the original source material.

I'm leaning towards not bothering and thinking it's a waste of time & money to try and trademark. I'm still intending to trademark my logo though, anyone foresee any issues with that? It will include the name but within a unique graphic design.

 

[fisicx]

The existing mark is essentially the name I want but with a tagline. Think "Star Wars: The Clone Wars" or "Spider-Man: Far-from-home" and the mark I want is "Star Wars" or "Spider-Man".

If there is possibility of confusion the application may get refused. So your idea of using a clipped name could cause confusion.

 

[mgb]

Does it make a difference if I can show that the existing mark holder is not using it, and has never used it in the classes that I want? It was registered 8 years ago.

 

[Ozzy]

I don't know the answer specific to your case, and maybe @Trademarkroom Ltd or @RevoMark might be able to help, but just in case it is a similar scenario...

I went through the process of registering two trademarks that are 'descriptive' for this site 'UK Business Forums' and 'UKBF' and I had to rely on the whole 20 years of history, being known for the terms, proof of use across various social media, etc. It was rejected twice, had to challenge, a quite long process to get these words/phrases trademarked for words which are common use.

It was successful, but was a very long process that wouldn't have been successful if these forums were not over 20 years old.