Trademarking/protecting your business name

[Pebble Communications]

Hello,

any advice welcome. I've just been called by someone who was thinking of setting up a company called Pebble PR and who bought the PebblePR.co.uk domain about a year ago. She found me and called to see if I thought there would be a problem with her using the name. I told her I wasn't keen as there was too much room for confusion and she is going to think about whether to go ahead with the name or not. She was talking about the 'branding' possibilities of it and that she had noticed I was doing many of the things she had thought of.

we are both sole traders. Do I have any legal standing to stop her using the name or similar logo/marketing etc? Should I run off and trademark everything (I haven't done anything so far).

she also asked if I had any intention of becoming a ltd company in the future. Would that make a difference to our positions? What would happen if she became a limited company before me, would that give her rights over the name?

Help?

 

Yes she has a problem - it's called passing off. You've already built up your business and if she starts trading in the same field with a near identical name it could cause you damage. No doubt someone will be along soon to give you solid legal advice but I had to check out my trading name very carefully before I went freelance to make sure I wasn't impinging on any other freelance writer-cum-editor's territory. I'm lucky that my blokey is a patent attorney and did all this free for me.

I'm not sure you necessarily need to trademark everything but you may well find a letter from a trademarks lawyer warning her off does the trick.

 

Hi Fiona, I have sent you a pm.

 

[Antonia @limeone.com]

I am suprised you did not tell her in stronger terms just not to do it as you would, if she proceeded, take legal action to protect your current business name! Whilst I think trademarking is a great way to provide protection, that only comes if you can actually back it up with legal action if it is infringed.

At this stage you really need to think through and chat through the options on protection and make sure you tell the other person it is not Ok and you would have to take action to protect.

Very hard when you are setting up and starting out and someone wants to hitch a ride from your name. There are ways to deal with it which are budget friendly and I am happy to chat them through with you.

 

[Pebble Communications]

Well I wanted to play it softly so as not to send her instantly rushing off to trademark/register it in any way. I also wasn't too sure if I would have a leg to stand on legally.She did end up sort of agreeing that it wouldn't be very beneficial for either of us to have such a similar name and I don't think she is trying a deliberate exploitation or why would she have bothered to phone me?

Thanks for all the advice. I'll have a phone round in the morning and sort something out though just to be sure.

 

[VeryMark]

Thanks for the email, Fiona - I'll phone you tomorrow after I've just checked the trade marks register.

 

[acp-bob]

Hi
If you are both in similar businesses, operating in markets which even cross over just occasionally, then you have to make a stand now and declare your position as the owner and operator of the name. Put it to her in registered post so that a date is established, and try to show how long you have been operating the name in this particular marketplace (have proof if possible, but don't show it just yet).

This will either have the other person running for cover because they can't beat your claim, or they will run for a lawyer and declare their claim to be stronger. At least then you will know what you have to do.

hope this helps. Cheers. Bob

 

[VeryMark]

It's dangerous to take any action until your legal position has been researched properly, otherwise you may just make things worse.