Obtaining a Trademark

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Dratsab

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#214637 22-May-2017 12:54

I'm looking at Trademarking a name in relation to a project I'll be setting up in the not too distant future. I've done a bit of research and the process doesn't seem particularly complicated so I was wondering if anyone here had been involved in Trademarking something and could offer any advice around experiences in relation to any "gotcha's" you may have encountered?

TIA
Steve

Noodles

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#1785941 22-May-2017 12:59

I haven't personally gone through the process, but our company did a while back. As I understand it, it's an expensive process (ours cost $10k+) as the trademark has to be researched and filed correctly. Unless you're looking to make millions from the project it's generally not worth it.

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kingdragonfly

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#1785954 22-May-2017 13:17

The letter case matters (upper and lower case letters).

Don't get cute and do a "sound-alike" with any large corporations name.

There are classic cases where IBM sued over anyone using "/2" as part of a trademark.

And here's one from Facebook

https://arstechnica.com/business/2016/05/instagram-littergram-trademark-spat/

"Facebook has disputed a UK-based app's registration of the name LitterGram by claiming that it infringes the trademark of its photo-sharing service Instagram.

LitterGram's creator Danny Lucas responded to the complaint with a video plea to Facebook chief Mark Zuckerberg, asking him to allow the app to keep on trucking with its current name.

The app—which was launched in 2014—allows users who snap photos of languishing litter in a public area to upload the images, add a location tag, and make local authority officials aware of the problem. LitterGram is also used to name and shame litter bugs, especially drivers who toss stuff from their cars.

'We have just reached our first major milestone with our free LitterGram Council Portal and have now got the UK’s first council to officially partner with LitterGram,' Lucas said (PDF). 'Significant to say the least. The penny has dropped. This app can now spread to 433 other councils around the UK.'

Changing the name of the app, Lucas added, 'will destroy all of our ingenuity and hard work.'

It's understood that a conversation between LitterGram and Bristows—a law company hired by Facebook—has been going on for several months now. In a letter (PDF) dated April 26, Bristows said its client was 'willing to allow a three to six months' period, in which use of LitterGram can be phased out.'

Facebook pointed out that LitterGram is essentially a photo-sharing app, which operates in a way similar to that of Instagram. With that in mind, the free content ad network decided to ask LitterGram to rename the app."

frankv

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#1785958 22-May-2017 13:27

A trademark (or patent or copyright) is only as valuable as your ability to defend it.

3g

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#1785975 22-May-2017 14:15

My experience with getting a trademark in NZ (which I did successfully, by myself without any consultants or IP lawyers involved):

- It's not that hard as long as you follow the rules
- Keep the sector/area that you want the trademark in narrow and you'll have a greater success
- Expect for the initial application to be rejected.
- Realise that you then need to put forward a clear + reasonable defense for the point(s) that they rejected the trademark

There's a really good FAQ at this link:

http://www.jaws.co.nz/information/category/trade-marks/trade-mark-faqs

Off-topic: Patents are expensive and time consuming and I wouldn't recommend anyone ever tries the process by themselves.
Got my 5th patent issued last month - which was filed in 2008 8-).

Dratsab

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#1785982 22-May-2017 14:46

Noodles: I haven't personally gone through the process, but our company did a while back. As I understand it, it's an expensive process (ours cost $10k+) as the trademark has to be researched and filed correctly. Unless you're looking to make millions from the project it's generally not worth it.

Woah - that's incredibly expensive! I've been looking at the MBIE IPONZ website which indicates substantially lower fees. This, however, would only be a Trademark applicable in New Zealand. I take it your company's trademark was for multiple territories including the US?

Dratsab

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#1785983 22-May-2017 14:48

kingdragonfly: Don't get cute and do a "sound-alike" with any large corporations name.

Cheers for the reply. The name I have in mind is (apart from a domain squatter on the .com site) unique :-)

Dratsab

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#1785997 22-May-2017 14:54

3g: My experience with getting a trademark in NZ (which I did successfully, by myself without any consultants or IP lawyers involved):

- It's not that hard as long as you follow the rules
- Keep the sector/area that you want the trademark in narrow and you'll have a greater success
- Expect for the initial application to be rejected.
- Realise that you then need to put forward a clear + reasonable defense for the point(s) that they rejected the trademark

There's a really good FAQ at this link:

http://www.jaws.co.nz/information/category/trade-marks/trade-mark-faqs

Off-topic: Patents are expensive and time consuming and I wouldn't recommend anyone ever tries the process by themselves.
Got my 5th patent issued last month - which was filed in 2008 8-).

Thanks for the info and the link. Congrats on the patents! :-)

freitasm

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#1786005 22-May-2017 15:13

I have trademarked Geekzone many years ago - so long that I actually had to renew it a couple of years back. When I first applied to IPONZ it was pushed back because they didn't like the made up word - no specific reasons given. I then hired a trademark lawyer who did the application again and this tie argued - enough to get it through and approved. Since then that office has changed hands so when it came time to renew the trademark I just did it myself, since it was just the matter of having access to the IPONZ account using my RealMe account and paying for the renewal.

It's not enough to have a trademark, you have to actually defend it. I had a run in with a New Zealand retailer a few years back when they started using "Geekzone" as their technology section and had ads with "Come to the Geekzone". Lawyers had some work that week and the retailer settled and agreed to not use it again.

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Dratsab

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#1786290 22-May-2017 23:13

freitasm:
I have trademarked Geekzone many years ago - so long that I actually had to renew it a couple of years back. When I first applied to IPONZ it was pushed back because they didn't like the made up word - no specific reasons given. I then hired a trademark lawyer who did the application again and this tie argued - enough to get it through and approved. Since then that office has changed hands so when it came time to renew the trademark I just did it myself, since it was just the matter of having access to the IPONZ account using my RealMe account and paying for the renewal.

It's not enough to have a trademark, you have to actually defend it. I had a run in with a New Zealand retailer a few years back when they started using "Geekzone" as their technology section and had ads with "Come to the Geekzone". Lawyers had some work that week and the retailer settled and agreed to not use it again.

A little for for thought there. The 'no specific reasons given' bit concerns me a little. The IPONZ site says "However, sometimes we decide the trade mark can't be registered, in which case you'll be advised of the rationale behind our decision" so I wonder if this might be an update which has occurred since your registration. I recall the run in with the retailer :-)