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We are trying to register a new trademark (words and not images) and had it rejected. I believe we have a good argument based on the fact that there of dozen of other companies using the word that is apparently the issue but they come back saying that we are not allowed to argue based on the fact that they have approved other submissions using same word. I don't want to say the words on the forum we are trying to register but more interested in others who have fought and won their case please.
I'm just going through a trademark application myself. Are the other users holders of a trademark, or simply using the name? There are 35 trademark classes, but generally you can't have 2 similar trademarks in the same class. I'd suggest you need to speak to a trademark specialist who has experience in such matters - I had some experience of this in a previous job and once someone has a registration in a particular class they have a right to object to other applications and one way to resolve it is through a non-compete agreement.
You are right in that speaking to a specialist is a good idea but I believe the registers rejected the name rather than other applicants rejecting. They were very dismissive when we produced a long list of accepted trademarks all using the same word we were trying to include in a three word trademark.
Can you amend the spelling of the word in order to make it more distinctive?
It is our Ltd company name and web site name so not really - a different company to UK Printed Mugs. Basically one of the biggest food companies uses the same word and they were allowed to use it but apparently we were told that previous acceptances don't mean anything. All a bit suss really - big companies, deep pockets, get what they want...
It's not really about big companies receiving favours, it's simply about being the first to register a particular trademark - the UK IPO office who manage UK Registrations are simply applying their rules consistently and are very black/ white. Big companies do tend to take out multiple applications in multiple classes to ensure that nothing could impede on their future business. One potential route could be to appoint some IP lawyers to write to the trademark holder on your behalf and see if they would be prepared to 'licence' the trademark on a non-compete basis?
i am going through a trademark application also at the moment so any advice would be greatly appreciated. Is there a particular trademark class what best suits the making of the usual sub gifts and tshirts, was sailing through the application until i got to the point where i had to choose a trademark class to best suit my company
Trademark classifications mainly relates to the finished product, not the process - there are 35 different classes and things like tee-shirts are classed as apparel, mugs are a different class to glassware. I went through each class, line by line and in the end, ended up taking out a registration in 6 classes for my business. Also bear in mind that it's simply not just about the products you're doing today, as you may want to extend your range in the future as well as protecting yourself from someone else potentially taking out a similar trademark in a different class.
In fairness, if I was to use the phrase UK printed mugs on my website and told I couldn't I would be pissed. It is all generic and descriptive commonly used wording so hard to take ownership. If others got through with UK made food or similar they are lucky. There is not enough uniqueness imo and would be co.monly used. Imagine telling Listawood or Keramikos you can't advertise yourself as having UK printed mugs. I think you will struggle to overturn it.
Hi Andrew. Not sure if you mean we tried to register our company name (as per our name on this forum) but we didn't. It was a different name altogether and it was down to one word used being "EXPRESS". Basically we were not allowed to use this word they said as it was too generic. Even though there are dozens of companies using it e.g. "PIZZA EXPRESS"! They were rather rude when we presented them with about 20 company trademarks using the word and they just ignored us and said other peoples successful registrations cannot be used to justify new registration applications! Sounds VERY Dodgy to me.
I see and understand. Would have thought it was viable if it was in the same format as pizza express. The other way around I.e. express pizza I can understand is not an option but the first way is not a normal phrase so would work as a brand.
Hi Andrew. Sadly your assumption is incorrect. The word Express was used last in our phrase. They claimed just having the word in the phrase was not acceptable. Go figure.