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

#1

Post by ayusaf » Wed, Dec 21, 2011, 12:17 PM UTC

I'm one of the Cofounders of a startup called Super Owl and we are busy working on an iPhone app which delivers spoken word content weekly to subscribers. We have recently been featured as part of a Next Web article about 'How Startups Choose their names' - http://thenextweb.com/insider/2011/12/03/9-startups-explain-how-they-chose-their-names/

This was a nice bit of early press for us and we were surprised but delighted to be approached. However, very soon after this article went out we received a letter from a company stating that we have "breached their trademarks". This company is another startup, yet to launch their app publicly, however they claim that they are an established business - see their first letter to us here - https://skitch.com/aishay/guy25/letter1

I e-mailed the following reply:

--------------------------

"Hi ,

I haven't heard of * before - just looked at your website and it looks like a great service.

I'm slightly confused about the letter attached as you state that Super Owl breaches your trademarks - have you registered a trademark for the name 'owl', '' or 'super owl'? Obviously, if it's the latter I can appreciate your concern.

First of all to clarify Super Owl is not a streaming service for audiobooks so it's quite different from what you're doing (we are aggregating spoken word audio podcasts for download). As yet, we also are not related to anything in the book space and our future plans don't include audiobooks.

Owls and audio are what we appear to have in common and I hope we can agree to differentiate ourselves in the market through product, logo, marketing, service etc. A quick search in the iTunes store reveals several apps with the word 'owl' included and I haven't seen this as a major setback or concern.

I hope this puts your mind at ease, however do feel free to contact me if you would like to discuss anything further. You can get in touch by e-mail or give me a call directly on *.

Best of luck on your launch.

Regards,

Aisha Yusaf"

--------------------------

I have now received the following letter as a reply to my e-mail - https://skitch.com/aishay/guy2a/letter2

So, here's my dilemma, do we change our name?... I don't feel like we are infringing any trademarks even though we do share the word 'owl' in both our business names. As we haven't even got a product out as yet we don't want to waste our time or money on legal fees or petty issues but rather concentrate on building, selling and promoting what we make.

The business that has been pursuing us on the trademark issue also doesn't have a product out (even though they speak as though they have) and although we can rebrand what we're doing, as it's not going to make or break our app, I am concerned that by doing so we are being bullied or coerced into doing something which is not even necessary.

At this stage no one really cares about our product and if we're lucky some people might care once its available to use and buy, so we don't have time or energy to spend on the wrong things (such as this).

Any advice, help or suggestions would be most appreciated.

Thanks :)

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

#2

Post by _millymoo » Wed, Dec 21, 2011, 1:04 PM UTC

Hi Aisha, Craig asked me to drop you a line.

There is not enough info here to look at the specifics of the issue, although I do note that you are seeking general advice as to the line you should take - in short what degree of pragmatism you should exercise.

That is a difficult one to answer. You mention lack of time. It is always difficult to ascertain at the start of a problem how much time an issue will take, simply because it is impossible to determine how far the other party are willing to push things. If they dig their heels in, the time expenditure could be considerable. If they are flying a flag, they may simply go away after an email or two - the problem is, you just never know.

In terms of costs, again, it could be a simple matter and cost a few hundred pounds and be resolved by a few letters. They may dig their heels in and you then face either spending more, or finding a work around. Again it comes down to whether they are simply flying a flag, or whether they are prepared to push matters.

Realistically, I would suggest you need to ascertain your legal position in terms of: a) Whether they do have a trademark; b) If so, whether your name/logo is close enough to breach that;

Taylor Wessing run free events, both on their own account http://www.taylorwessing.com/twtechfocus/events.php and through the new Tech hub initiative of the Start-up resource centre http://www.techhub.com/magazine/read/techhubs-startup-resour...

I would try to speak with them - they may offer an initial free appointment for a start up, and take specific advice on your problem, then decide the way you want to go.

Milly.

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

#3

Post by n9com » Wed, Dec 21, 2011, 1:10 PM UTC

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 explore resolving the dispute amicably before they can file for a case. You will get at least 30 days after receiving a protocol letter to respond.

I'd check out what exact trademarks they hold and research a bit into case law surrounding this. Find out if they have a strong case, if they don't, I highly doubt they will spend tens of thousands on taking this to the high court.

Just my 2 cents, i'm not a lawyer.

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

#4

Post by notahacker » Wed, Dec 21, 2011, 1:24 PM UTC

If the UK company are who I think they are (begins with a B) then I can understand where they're coming from - you're both offering audio content on demand and their monthly subscription model overlaps with your monthly new product model.

Realistically, they might have to spend vast sums to win a trademark law case, but they only need to write a letter to Apple to jeopardise your business...

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

#5

Post by ayusaf » Wed, Dec 21, 2011, 1:59 PM UTC

_millymoo wrote: post #2

Hi Aisha, Craig asked me to drop you a line. There is not enough info here to look at the specifics of the issue, although I do note that you are seeking general advice as to the line you should take - in short what degree of pragmatism you should exercise. That is a difficult one to answer. You mention lack of time. It is always difficult to ascertain at the start of a problem how much time an issue will take, simpl…

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.

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

#6

Post by ayusaf » Wed, Dec 21, 2011, 2:09 PM UTC

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 establish how much of a case there is here, as you've mentioned.

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

#7

Post by 18pfsmt » Wed, Dec 21, 2011, 2:34 PM UTC

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 have a product and product literature publicly available and in use for at least one year, and one must register for the mark(s) with industry/ product -specifically noted. From the redacted letter, it appears this company is claiming to already have been granted a mark, so this should be a matter of simply looking it up.

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

#8

Post by pbhjpbhj » Wed, Dec 21, 2011, 2:37 PM UTC

ayusaf wrote: post #5

_millymoo wrote: post #2

Hi Aisha, Craig asked me to drop you a line. There is not enough info here to look at the specifics of the issue, although I do note that you are seeking general advice as to the line you should take - in short what degree of pragmatism you should exercise. That is a difficult one to answer. You mention lack of time. It is always difficult to ascertain at the start of a problem how much time an issue will take, simpl…

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.

The Nice Classification governs the breadth of a trademark. Basically you can't register two marks with the same name in the same major class for the same geographic area - that's a slight simplification, but serves here.

If there's (expected to be) confusion then one mark damages the other.

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

#9

Post by _millymoo » Wed, Dec 21, 2011, 2:42 PM UTC

ayusaf wrote: post #5

_millymoo wrote: post #2

Hi Aisha, Craig asked me to drop you a line. There is not enough info here to look at the specifics of the issue, although I do note that you are seeking general advice as to the line you should take - in short what degree of pragmatism you should exercise. That is a difficult one to answer. You mention lack of time. It is always difficult to ascertain at the start of a problem how much time an issue will take, simpl…

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.

Hi, it is decided on a case by case basis - basically a judge has to consider the two together to determine that, but there is general guidance (albeit really, little more than logic) here: http://www.ipo.gov.uk/types/tm/t-other/t-infringe.htm. As you can see from his language in his email, the person who wrote to you has clearly read this or something similar.

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

#10

Post by _millymoo » Wed, Dec 21, 2011, 2:43 PM UTC

ayusaf wrote: post #5

_millymoo wrote: post #2

Hi Aisha, Craig asked me to drop you a line. There is not enough info here to look at the specifics of the issue, although I do note that you are seeking general advice as to the line you should take - in short what degree of pragmatism you should exercise. That is a difficult one to answer. You mention lack of time. It is always difficult to ascertain at the start of a problem how much time an issue will take, simpl…

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.