bootle - Profile

Here's the wording the IPO used in their response to me:

The test of a series is NOT simply whether the marks in the series would be regarded as confusingly similar to each other if used by unrelated undertakings. Any variation in the non-distinctive features in the marks must leave the visual, aural and conceptual identity of each of the trade marks substantially the same.

I read that as they don't accept my argument, i.e. that if "confusingly similar" then they are a series. They are saying the judgement is stricter than that, they must be substantially the same (whatever that means). If someone did come along and register something (in the same class) that was "confusingly similar" it would be rejected.

The IPO came back refusing the series as not similar enough. So went ahead with a single trademark, which has been accepted. I decided the single one should have the exclamation mark in the middle, as the logo is based on that (so would have no problem putting (R) on the logo).

Conclusion - IPO very strict on what they consider a series. It's probably not worth the bother, as if close enough to be a series then it would be an infringement if someone tried to register it with such a similarity.

Thanks Jane, you were right. I went ahead and ordered a series of five (singular and plural, plus logo). They came back allowing me to choose one, and give comments - which I did. I went for zoo!bks (as text) on the basis that my logo etc looks like that, and if anyone (possibly including myself) registered zoobks (in the same class) I believe it would be considered too similar.

I'll update with the IPO's final decision.

Thanks Jane and Indizine,

Any thoughts on singular vs plural, i.e. register zoobks and zoobk as a series?

A big relief to hear they would let me choose which is definitive if rejected as a series. Sounds like £50 per variation is better value than £1k for a lawyer? Just a guess...

very many thanks for advice from both of you.

Thanks indizine! Maybe best if I trade mark the text with the exclamation mark only, i.e. zoo!bks (trust me, it makes sense in practice), and have zoobks as a variation. Forget the logo, with those two taken care of, there is no need to trade mark the logo as the logo is based on the text anyway. So no plans to submit the logo image.

The great thing about a forum is crowd-sourcing - someone might know the answer. I suspect using a lawyer is an expensive way to be told "it's up to the interpretation of the IPO" - which  I knew anyway.

Another way to view it is what would happen if I submitted zoobks and zoo!bks as two applications. Would they conflict, and therefore the second be rejected due to the first? If so, they should be allowed as a variation!

Think I've made my mind up to register zoo!bks with zoobks as a variation. I think that even covers seeing the exclamation mark as a 'i'.

cheers!

Hi, I'm registering a new trade mark. Let's call it zoobks (not the real name, but similar) and I've got a graphic for its icon.

The interesting bit is that it will often (especially in logos) have an exclamation mark in the middle, i.e. zoo!bks

Currently I'm working through the ipo.gov.uk website to register zoobks.

Although I've got a logo based on it, looking at the IPO advice, it's better to ignore that and go with just the text, then all logos based on the text are covered.

If I register the series zoobks and zoo!bks do you think that would be accepted a "very small difference" according to the IPO help:

"A Series of trade marks is a number of marks with very small differences.
Any differences between the marks must not substantially change how they look, sound or alter their meanings."

If it's not accepted as a series, would they accept the first, or reject everything outright and I have to re-submit, taking months again?

Many thanks.