Trademark?

Springbean

Hi,

I hope that I am posting in the right place.

I have decided on a business name and found that the web address is free to buy.

Only thing a friend advised would be to check it doesn't conflict with a similar named business in the U.S.

How do I go about this? Could I get sued if I used this address for my business? I'm not sure what I need to do. Any advice would be appreciated. Thanks

paddyrg

Are you selling in the USA? If not, I'd be less worried about it TBH, unless you want to check every country out there!

However, USPTO (US Patents and Trade Marks Office) would be a good place to start

Brassedoff

I had a long a protracted Trademark despite with a firm in Fort Lauderdale in Florida.

As Paddyrg has said, check the link he have you. But I guess you already have suspicions regarding the name? On top of that you need to check TM's globally, save China who currently do not care about who breaks what and who breaks any other TM. They only protect their own companies.

You need deep, deep pockets when it comes to Trademarks.

Do a firm check of the domains. All the them, you should have a good 20 or so to go through. Ensure that you don't just check the name, you can have a logo that also says the name.

One of our TM's is Pro Dive. You'll find the address is the Sydney head office, but in the UK, my firms address. Yet I can name three others who pass off our UK, EU TM. We end up only really going after someone other than a one man band. You might ask why? My knowledge of Trademarks, Patients and the systems governing started at University and continues today. Be under no misconception, Trademarks are not something that can be done by yourself, not unless you have specialist knowledge. My Trademark Attorney (the fancy name for solicitor) will charge £1000 for a simple enquiry and warning letter.

Just doing a Trademark (name, not logo) in the the UK £15,000 and EU £18,500. That's a massive cost for a name.

I can give you some free advice (I cheekily charge usually). The cheapest way is to buy all the domain names you can with a tier 1 global (that means you are able to buy every domain in the world including all the nasty ones like XXX etc), I use 321-domains. Once you have purchased the domains, which now have effectively a cheap way to protect a name. Then invest the money in a good multi-array web design company, that means they are able to use the server system to intelligently produce 20 different websites, but all with content on that is intelligently changed to avoid duplication on a daily basis. I have used [EMAIL="martynhale@mshconsultancy.com"]MSH-Consultants[/EMAIL] for this dozens of times and they have never failed me. They do all the Trademark compliant work globally for you.

Once you are trading, you establish a prior reputation. Which, should anyone then apply for the same name in the same category, you will be able to prove prior enjoyment of the Mark. It would go for the EU too (you might ask why not just go for an EU Trademark, the answer is you do, but you still have to get them in the dominion you wish to trade in. Otherwise you have a world of pain and having to deal with Slovenian Courts.

Then, if you have built the business up and proved the Mark is really worth having, you will have the cash to apply for them.

In the meantime, I have probably saved you £10-15K!

Springbean

Thank you for your replies

I didn't understand all of it though

My issue is that a business in US, one woman band, has a business and the name is very similar to the name that I would like. The name that she uses is the name of the role. Whereas my name is the name of the role but with an 'ing' on the end.

The nature of the work is that it can be done over phone or via Internet so chance of outside US customers is a possibility. Therefore, will I be treading on her toes enough to sue me as she does have a trademark, I think.

I'm only looking to set up my first business so I am quite ignorant to the whole business thing yet I would like to try to avoid these issues in the future.

Thanks again for the advice

Springbean

To be clearer,

Say someone has a website and business based in America called 'businessaccountant.com', they could possibly trade in uk too.

What if I set up a website called 'businessaccountancy.co.uk and only trade in uk.

How important is this? Should I be concerned?

Thanks

Percy1983

I can list a few websites with similar names, all of which are in america to which I shouldn't be standing on there toes as such.

To be honest I just found my business name and added .co.uk to it and called it done.

I doubt any of them know (or care) I exist.

Wywth

Springbean wrote: »

To be clearer,

Say someone has a website and business based in America called 'businessaccountant.com', they could possibly trade in uk too.

What if I set up a website called 'businessaccountancy.co.uk and only trade in uk.

How important is this? Should I be concerned?

Thanks

Are you aware that aa.com does not belong to a well known UK motoring organisation?

How important is this? I would think it's quite important to that motoring organisation ... but there's nothing they can do about it.

Percy1983

I think as long as you can show legitimate use for a domain there isn't much they can do.

with the aa.com example, 2 companies have got just as much right to be there so its first come first served.

On the flipside it it was just a domain squatter sitting on aa.com asking £1m for it then the aa would have a good case to fight.

Springbean

Thank you

heidip48741

I would have thought that if the web address is the name of your business then it is effectively your trademark too, even though you may not have officially registered it. I am assuming this is a .co.uk domain because if it was a US domain then the US company surely would have already registered it. If you are using your business name dot co dot uk then you would not be breaching trademark rules as I can see.

The problem is with people deliberately buying tradenames and trademarked domains that they think they will later be able to sell to their respective owners at inflated prices. For example, if I were to buy iphone7 [dot] com and then wait for apple to release an iPhone 7 so that I could demand a huge amount of money, that is the situation where you will most likely just have the domain name taken off you.

If the domain you are thinking of has not been registered yet and is in fact related to your business then there is no issue whatsoever.

Springbean

Thank you

The web address/business name that I would like is available as .co.uk. It is not available as .com, nor is the .com address trading.

The similar business is trading but my name is the same, just with an 'ing' at the end, IYSWIM.