Trademark Question

gottohaveit

Hi, we have received a letter from a solicitor telling us that we are using another companies trademark. But we are slightly confused.

I will create a similar scenario to avoid any names being mentioned.

For example, we sell a picnic table for children and in our listing we call it an "Acme Childrens Picnic Table". The other company have a trademark on the words Childrens Table with a lovely little logo above the word table. The tables are not identical, we haven't used their logo, we just happen to have used the words Childrens and Table in the title and body of our product. How else could we describe a childrens picnic table?

Could somebody please tell me if we are in the wrong, because if we are, of course we'll change it, but it seems rather bonkers if you ask me.

Am I able to trademark the word brown bread and stop other people from ever selling brown bread?

InsideInsurance

It depends on if you are talking purely dictionary words in a normal phase as per your example of Childrens Table or something more unique/ unrelated even if its made up of dictionary words (eg Games Workshop or Homebase)

Its not black and white nor a science and so even experts cannot tell you with absolute certainty in the majority of cases which is why contested cases tend to go on for ages and the biggest winners are the lawyers

gottohaveit

Thank you for the quick response, we created the listing purely as what we saw the item was, we never new this other product existed and when creating a product we didn't even think that we should be looking at trademarks when using such generalised words.

Its certainly put a dark cloud on the bank holiday weekend (not that we needed any with this weather)

InsideInsurance

There doesnt have to be intent for you to be guilty of trademark infringement, though any compensation due in certain jurisdictions can be lower if it was accidental than intentional.

Of cause just because a lawyer has approached you doesnt mean their claim will succeed. The one time I had trademark issues was over a domain name and after the initial letter demanding I handover the domain and pay their solicitor fees they ended up buying the domain from me after a bidding war with another company that also owned a trademark that was contained with the domain name and who had given me permission to use it. These two companies had been battling each others for years.

paddyrg

It may or may not be a valid claim - although it sounds a bit tenuous as you describe it.

gottohaveit

We have taken on the services of a very good specialist trademark solicitor who are certain it will be sorted after they respond to their demands. Not cheap, but worth every penny, plus we understand how it works a bit better.

Let's see what happens next!

InsideInsurance

IP law often comes down to who has the deepest pockets unfortunately.

Hopefully they will be able resolve it quickly, and at a sensible price, for you

gottohaveit

Just an update, the final update. Company have decided to drop case, cost us £1k in our legal fees. Could have been more if we didn't use a specialist and lost.

paddyrg

gottohaveit wrote: »

Just an update, the final update. Company have decided to drop case, cost us £1k in our legal fees. Could have been more if we didn't use a specialist and lost.

Now maybe put in a counterclaim for your legal fees defending their baseless attack ;-)

Pagett

Sorry, I didn't see this thread when you first posted it about a year ago

Alternative possible worrds for child:

adolescent
baby
infant
juvenile
kid
minor
nipper
preteen
teenager
toddler
tot
young person
youngster
youth

Alternative possible words for table:

bar
bench
board
buffet
bureau
console
counter
desk
dresser
lectern
pulpit
sideboard
slab
stand


As I say, I'm sorry I or no one else helped at the time. Could have saved you a grand, not to mention the stress and anxiety no doubt caused.