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Ask HN: Help Is it worth rebranding (trademark infringement)?

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Re: Ask HN: Help Is it worth rebranding (trademark infringement)?

#11

Post by ayusaf »

18pfsmt wrote: post #7

My first question would be why either of these companies would choose an owl as a mascot when owls are known for good eyesight or wisdom, but not auditory abilities (I suppose this is my viewpoint). With that said, I have personal experience with trademark law in the US (not the UK), and I don't think they have a leg to stand on if US and UK law is the same with respect to trademarks. For example, in the US, one must…

For us wisdom is a positive connotation and also due to the owl's hearing range: http://en.wikipedia.org/wiki/Owl#Hearing

But, that's probably a bit off topic - our name and the mentioned company's name has the word 'owl' in common, in our case alongside the word 'super' in their case alongside other word(s) so I am investigating how much, if at all, there are any breach of trademark grounds here.

Re: Ask HN: Help Is it worth rebranding (trademark infringement)?

#12

Post by mseebach »

I think it's worth calling out and appreciating the fact that they are approaching you in a calm and reasonable manner instead of through a huffing and puffing lawyer nastygram.

It reads a lot to me like they are willing to negotiate a mutually beneficial agreement. Go meet them face to face (if practical, I think you're both in London?) and bring a list of the key features of your owl, logo and name and how it differs from theirs and see if you can give them some guarantees to keep yours different enough from theirs to avoid confusion going forward.

Re: Ask HN: Help Is it worth rebranding (trademark infringement)?

#13

Post by justfornow »

_millymoo wrote: post #10
ayusaf wrote: post #5

Earlier quoted context omitted.

Thanks, Milly. I think the tricky bit would be how to establish if our logo / name is close enough to theirs to breach their trademarks. I wonder if there are any guidelines on this or if it is based on opinions / review? At this stage I am looking for general advice, as you mentioned and the replies posted here, including yours, are useful.

Also, it is worth firing of a quick email to ask if they have registered anything, and specifically, what they have registered. I wouldn't enter into any other correspondence until that information were given.

They have listed the 2 trademarks in letter 1. I guess thats what you are asking for advice about?

Re: Ask HN: Help Is it worth rebranding (trademark infringement)?

#14

Post by 18pfsmt »

ayusaf wrote: post #6
n9com wrote: post #3

How important is the name to you? That's what you got to decide. If you decide you'd like to keep the name, then don't worry. These guys will have to get serious and actually follow legal protocol before even filing for any case. Such a case would be held in the high court, and this will cost them tens of thousands. What they have sent you does not appear to be a protocol letter and if they do send you one, they must…

Thanks - you make good points here. Weighing up the importance of our name / brand is definitely worth thinking about. Unlike the company approaching us, luckily we haven't spent all our efforts on branding, registering trademarks etc!.... since we believe in working in a lean, agile and speedy way up until launch (having learnt from previous failures!) we are open to change things when necessary. We need to establis…

To that end, I think you should start by doing a search here:

http://www.ipo.gov.uk/types/tm/t-os/t-find/t-find-prop.htm

If they hold the mark, I would re-brand. If they do not, I would try to launch as soon as possible with an MVP.

Re: Ask HN: Help Is it worth rebranding (trademark infringement)?

#15

Post by ayusaf »

18pfsmt wrote: post #14
ayusaf wrote: post #6

Earlier quoted context omitted.

Thanks - you make good points here. Weighing up the importance of our name / brand is definitely worth thinking about. Unlike the company approaching us, luckily we haven't spent all our efforts on branding, registering trademarks etc!.... since we believe in working in a lean, agile and speedy way up until launch (having learnt from previous failures!) we are open to change things when necessary. We need to establis…

To that end, I think you should start by doing a search here: http://www.ipo.gov.uk/types/tm/t-os/t-find/t-find-prop.htm If they hold the mark, I would re-brand. If they do not, I would try to launch as soon as possible with an MVP.

Yes, they do have registered trademarks. Do you think we should rebrand even if we both have different names (with only thw 'owl' part in common), different branding (colour, design etc) and a completely different owl mascot / logo?

Re: Ask HN: Help Is it worth rebranding (trademark infringement)?

#16

Post by n9com »

ayusaf wrote: post #15
18pfsmt wrote: post #14

Earlier quoted context omitted.

To that end, I think you should start by doing a search here: http://www.ipo.gov.uk/types/tm/t-os/t-find/t-find-prop.htm If they hold the mark, I would re-brand. If they do not, I would try to launch as soon as possible with an MVP.

Yes, they do have registered trademarks. Do you think we should rebrand even if we both have different names (with only thw 'owl' part in common), different branding (colour, design etc) and a completely different owl mascot / logo?

What's the company's name? Can't give you specific advice without knowing this. Also, take a look at the company's accounts (buy a digital copy via companies house for £10) - see if they are even in a position to take legal action.

However, just bare in mind, even if you are 'right' and you are not in violation of their trademark, if they have the money there is nothing stopping them from taking you to court after they have tried amicable means to solve the dispute to no avail.

Just to give you an example, I learnt the hard way that even when you are right, it is often better to settle than spend thousands trying to fight - especially if the other party has deep pockets.

I had a legal dispute before where I was legally in the right - 99% chance of success in court, but we decided to settle as going to court usually means everyone loses but the lawyers. It's also pretty stressful. Pick your battles.

Re: Ask HN: Help Is it worth rebranding (trademark infringement)?

#17

Post by ayusaf »

n9com wrote: post #16
ayusaf wrote: post #15

Earlier quoted context omitted.

Yes, they do have registered trademarks. Do you think we should rebrand even if we both have different names (with only thw 'owl' part in common), different branding (colour, design etc) and a completely different owl mascot / logo?

What's the company's name? Can't give you specific advice without knowing this. Also, take a look at the company's accounts (buy a digital copy via companies house for £10) - see if they are even in a position to take legal action. However, just bare in mind, even if you are 'right' and you are not in violation of their trademark, if they have the money there is nothing stopping them from taking you to court after th…

I see you have experience of the 'picking your battles' thing and that is exactly what we need to do. This has been very useful and given me valuable perspective. I'll research as necessary and definitely post back here as to how we proceeded.

Re: Ask HN: Help Is it worth rebranding (trademark infringement)?

#18

Post by _millymoo »

justfornow wrote: post #13
_millymoo wrote: post #10

Earlier quoted context omitted.

Also, it is worth firing of a quick email to ask if they have registered anything, and specifically, what they have registered. I wouldn't enter into any other correspondence until that information were given.

They have listed the 2 trademarks in letter 1. I guess thats what you are asking for advice about?

So they have, I only skimmed it. My bad.

Re: Ask HN: Help Is it worth rebranding (trademark infringement)?

#19

Post by aestetix_ »

(note, I am not a lawyer)

I've dealt with this exact issue before, although through US law and not UK law. One thing I found is that a lot of places who have trademarks have to send out notices like this in order to maintain their ownership of the trademark.

That said, it's hard to get context on this with the information you've given us. Did this message come from a lawyer, or just an executive working there? A name change can kill a company, and the burden is likely on them to demonstrate that you are directly impacting them, which is hard to say without knowing anything about them. Do you think they have the resources to bring an infringement suit on you?

Trademark infringement can be hard to establish. A quick example: in the US, there are over 30 trademarks on the letters "AMD", for all kinds of different purposes. Trademarks are more than just a name, an infringement has to meet multiple standards.

I would look at the law on the books (in the US it's at uspto.gov, I don't know about the UK) and proceed from there.

Re: Ask HN: Help Is it worth rebranding (trademark infringement)?

#20

Post by ayusaf »

aestetix_ wrote: post #19

(note, I am not a lawyer) I've dealt with this exact issue before, although through US law and not UK law. One thing I found is that a lot of places who have trademarks have to send out notices like this in order to maintain their ownership of the trademark. That said, it's hard to get context on this with the information you've given us. Did this message come from a lawyer, or just an executive working there? A name…

Thanks for your reply. In answer to some of your questions - no, this letter is not from a lawyer, it's from the company's chairman. Their trademark was registered in 2010 and I can not confirm if they have the resources for an infringement suit, although I do know that they have not actually launched their product as yet.

I appreciate that the information is a bit limited but my intention is not to publicly name and shame so I have tried not to divulge too many specific details. I can say though, that what we share in common is the word 'owl' in our names, we are both building apps for audio content (in their case audiobooks) and in our case radio programmes / podcasts. Our owl logos also look very distinctly different.

The company who is pursuing us, from their letter, seem to feel that we should rebrand and I am wondering if they really have any grounds or are just being a bit pushy. As you mentioned there are several trademarks for 'AMD' in the US and I've found there are also several trademarks that include the word 'owl'. Of course if we had unknowingly named and branded our company exactly the same name as another registered trademark then we would be seriously considering a change. I am not convinced if it is warranted in this case though.

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