Case Study – Creative Thinking on Trade Mark Matters

We file hundreds of marks every year on behalf of businesses and as part of that service, we do run checks for obvious roadblocks. This means we can often say with some degree of certainty whether the mark you want is likely to get through and if not we make suggestions on changes that can be made before filing to ensure success.

Sometimes we are contacted by businesses that have made their own filing and have run into problems because there is a mark on the register that is blocking them and their intended mark. All is not lost at this stage. We can look into what the blocking mark is actually used for and suggest a way around a block that suits both sides. In these cases, businesses can enter into a co-existence agreement so each side has certainty how the other will develop their business to avoid confusion with the other. In a rare case, the blocking mark is so close to the marked field that co-existence is not possible. These cases are harder to resolve but we do use creative thinking to get around these problems. In one recent case, we searched the register of trademarks for similar marks which predate the blocking mark and that were owned by modest entities who might consider selling the mark to our client. Although the client, in this case, was trying to secure a logo mark we found a wordmark that if in our client’s ownership would solve the problem. We approached the owner and purchased the mark. The owner of the existing mark also threw in the domain name for free.

This is just one way in which we bring value to client businesses to deliver results that fulfil your commercial aims

Therefore Happy Client = Happy Lawyer!