Should I consider abandoning my trademark application if it's similar to another?

By : Forum Member
Published 9th April 2020 |
Read latest comment - 14th April 2020

Hello all, I'm very new to this site and the business world, I'm sorry for any mistakes.

I applied for a trade about a week ago, today I received the examination email and the attached letter reads as follows:

"My initial view is that your trade mark and
your goods and services are similar to the earlier trade marks and their goods
and services. Therefore the public are likely to confuse your trade mark with the
earlier trade marks."

My application has been accepted, however the examiner has found earlier traders with the same acronym.

For example; I trademarked MN Orange in Class 1 and two other traders trademarked MN In the same class with similar goods and services. I trademarked text only, there are also cartoony trademarks of MN.
Could this potentially cause some legal issues? If so, Should I consider abandoning my application or editing my goods and services?

Many thanks in advance.


Saf.M
Comments

Welcome aboard 

Ah the joys of Trademarking. It is a complicated subject with potentially disastrous or expensive consequences if you get it wrong, so if in any doubt, I would speak to a Trademark lawyer or specialist.

But, having gone through it a few times and had infringements, my fag packet advice would be, do you actually need it, before embarking down that road. 

If you're product or service is likely to be copied, replicated or plagiarised, it's more than likely to happen overseas where they won't recognise your trademark or just stick to fingers up when you try and pursue them. The EU I believe operates a cross EU Trademark, but not sure how that will work as we are leaving. But most counterfeiting or fraud will be Asian or East European based.

So do you have a product or service that actually needs to be trademarked. If you do, then you don't want any similar sounding competitors who were trademarked long before you arrived, otherwise any legal challenge in the future will be expensive. 

If your product or service is deemed valuable enough to need protection, then it's probably worth paying for some specialist advice and protect yourself as best as you can.


Steve Richardson
Gaffer of My Local Services
My Local Services | Me on LinkedIn

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