UK Trademark Class 35 for online retailer question.

[thedog]

Hello,

I am trying to apply for a Trademark that will be applied to my own range of products.
I have found many items listed under classes 2,3 and 4 which all seem to fit what I need.

However, I also want to setup my on online shop under this same brand name to sell my trademarked products but I also want to sell other brands and other products as well.
Most of which are not related to my own product, the other branded products are a type of wood finish.

My question is, do I need to pick a service listed under class 35 to do this.
I just cannot find a retail service that matches the other branded products products that I want to sell.

Any thoughts on this?

Thanks

 

[FreddyG]

If we knew what it is you intend to do or offer, we might be able to help you. But 35 is Business Services, so you just have to pick a unique name and register it.

 

[Paul Kelly ICHYB]

Registering a brand name is different to using it on a website.

With the limited info you have put, if you own the brand name, not registering it in 35 will probably not make a difference.

For the cost, you might as well do it, but it is probably overkill.

 

[thedog]

Thanks for your replies.
What I am trying to find out is that if say for example I register BrandA and place that on my products, and then register Brand A in class 3, against 10 listed goods. If my domain name is also BrandA.com and then I sell my BrandA products on my BrandA.com shop, then all is good?

But...
Someone registers the domain name BrandA.co.uk and opens an online shop and sells other products not related to mine. But they also register the trade mark BrandA but in class 35, against some service selling goods online.

They have not violated my trademark as I don't have mine registered in Class 35.
So, if I register my BrandA in class 35 as well, that should give me added protection. Right???

However, I cannot find a retail/selling service in Class 35 that directly relates to my products.
Is their a sort or generic retail online selling service that I can use in class 35 that would cover me.
Or is just selling online not a service where Trademarks are concerns. Seems lots of conflicting opinions about this.

Or I am I overthinking this and got it totally wrong? Which I am sure this is the case!
I want to protect not just my branded product range but also my brand name as well.

Does that make any sense?

Thansk

 

[thedog]

Also, what about the goods listed under each class. Seems to be many overlapping goods, so, is it best to pick as little as possible or everyone that matches in some way. I think I found 15 in class 2, and about 12 in class 3 that match my products in some way. Is it the more the better, or does that just cause other problems and less chance to get it granted.

 

[fisicx]

This is probably one of those times when paying a trademark lawyer to advise you would be a worthwhile investment.

 

[thedog]

This is probably one of those times when paying a trademark lawyer to advise you would be a worthwhile investment.

Yeah, I know you are right. Had a few quotes. Some around £400+VAT plus the TM costs, so maybe around £800. This is a new venture on a very tight budget. So, just trying to avoid any extra cost, all though this is very important for me. Hard decision, need to and have spent lots already.

 

[fisicx]

Or just launch and sort out the trademarks if the brand is successful.

But do remember, companies trademarks and websites are all different. There is nothing to stop anyone registering any domain and trading as long as they don’t infringe your brand trademarks. It can get very complicated. Just look at how many ‘Amazon’ trademarks, websites and companies exist.

 

[Paul Kelly ICHYB]

Why not just register the main/key domains?

 

[thedog]

I have already done this, registered various main domains and ready to apply for the product Trademarks. Just trying to decide if I should add Class 35, and if so, what service.
Maybe I should leave Class 35 for now, but then it costs so much more to add later. Uhmmm.
Just trying to do the right thing now. Its 'only' another 50 quid for class 35 but you have to pick a service, which is what I am finding hard. I don't offer a service but is selling online considered a service in someway that can add extra trademark protection to a brand?

 

[DontAsk]

Until someone else tries using you brand, it's irrelevant what domain you use for selling. Having a domain matching you brand may have advantages but these customers will find your website through searching if you rank high enough.

It costs only a few quid/yr to register the extra domains. I trade through a .co.uk but have the .com and .uk domains registered to prevent anyone else using them. You don't need to pay for hosting, etc., if you don't use them. I used to pay for hosting for the .com with a very simple redirect to .co.uk but decide it wasn't worth it.

 

[fisicx]

Trademark the products and forget the domains for now. I’ve had mine for years in direct competition with a big US brand and it’s never been a problem.

And it’s won’t stop some Chinese factory copying your products. Having a Trademark doesn’t offer that much protection.

 

[thedog]

Thanks for your replies.
I have already registered a number of domains for this reason. I understand that.
Maybe a Class 35 Trademark is simply not required.
So, I think I will just stick to classes 2, 3 & 4 and hope for the best.
Although, in each class I have picked loads of product items, which doesn't seem right to me.
Class 2 = 18 goods
Class 3 = 12 goods
Class 4 = 8 goods.

But most overlap each other. I read that having fewer goods in the application 'may' give a better chance of success. Again, another area where their is so many conflicting opinions.

Oh, well. Better get on and take a dive into Trademarks then and go with just 2,3, and 4. With as many goods selected as I think match.

Thanks to everyone for your replies.

 

[thedog]

Trademark the products and forget the domains for now. I’ve had mine for years in direct competition with a big US brand and it’s never been a problem.

And it’s won’t stop some Chinese factory copying your products. Having a Trademark doesn’t offer that much protection.

My main reason for trademarking is to stop someone trademarking my brand / name then coming after me saying I am violating their Trademark, basically stopping me in my tracks.
I understand its not as simple as that and common law also comes into play and other stuff I don't understand, but I just trying to add some basic protection, by at least having my brand name trademarked against some products

 

[fisicx]

You are making it far more complicated than it needs to be.

It would really help if you could post the domain name and the type of product you plan to sell. Right now we are just guessing.

 

[Paul Kelly ICHYB]

If you don't have the money to get proper advice, how would you defend someone using your registered names?

Focus on getting the business launched and build something worth defending!

 

[thedog]

If you don't have the money to get proper advice, how would you defend someone using your registered names?

Focus on getting the business launched and build something worth defending!

Very true, but hopefully it would stop someone trying if the first place. Maybe.

 

[fisicx]

Very true, but hopefully it would stop someone trying if the first place. Maybe.

It won’t. Not even for a second. They will copy you, steal your customers and wait for you to react. Then wait for you to take them to court. A year later once they have become rich they will just shut down the operation.

Or nobody will even know or care that you even exist.

Having a trademark offers almost zero protection. Only the lawyers will win.

 

[Paul Kelly ICHYB]

Only the lawyers will win

That should be the 11th Commandment! (Apparently, there were 15 commandments, but Moses dropped one of the tablets!!! It's true - they said it on Tik Tok!).

 

[thedog]

It won’t. Not even for a second. They will copy you, steal your customers and wait for you to react. Then wait for you to take them to court. A year later once they have become rich they will just shut down the operation.

Or nobody will even know or care that you even exist.

Having a trademark offers almost zero protection. Only the lawyers will win.

Thats very brutal. but true I suppose.
Just a small man, trying to do something good, will always loose against the bigger boys.
Unless you have lots of cash to back all this sort of stuff you don't stand a chance if someone tries it on.

 

[Paul Kelly ICHYB]

Just a small man, trying to do something good, will always loose against the bigger boys.

Welcome to the world of business!

 

[fisicx]

It’s not the bigger boys to worry about. It’s the anonymous business stealing your designs. And the Chinese factories who make your stuff flogging off the same products in their own shops.

 

[Lucan Unlordly]

It may not apply in your case as this was for an online service but I recently applied for a trademark name in Class 35 and there was a section for me to add my own interpretation of it's use.

 

[Porky]

Tend to agree 100% with @fisicx these days it really is a case of fat wallet wins, you are peeing in the wind, the protection is pointless because to enforce it is so ridiculously expensive, the legal.process so drawn out seriously you would be wasting your time.

For vanity, if it makes you feel warm and fussey having your trade marks registerd fine but dont spend too much on it would be my advice, focus your efforts and your cash on securing as much traction and market share as you can

Good luck