Just had a letter from an IP firm requesting I withdraw a trademark application. Anybody been through an opposition process on a trademark application before and have any advice?
Pinball info
Register a free account today to become a member! Once signed in, you'll be able to participate on this site by adding your own topics and posts, as well as connect with other members through your own private inbox!
Trademarks - any IP law experts here?
- Thread starter Rob zombie
- Start date
D
Deleted member 2463
They are winnable but do you have deep pockets?
There is a group member down south south/Kent way who I delivered a GnR to who is a copyright lawyer.
I thought that anyone opposing a TM needed to contact the office who are considering it - the UK IP office.
Just googling it I got this:
Does the letter start with 'without prejudice'?
I thought that anyone opposing a TM needed to contact the office who are considering it - the UK IP office.
Just googling it I got this:
Does the letter start with 'without prejudice'?
OP
OP
Yes it's "Without prejudice to save costs"
It seems like if they had a serious case they would just need to fill in an online form to oppose it. I feel like they're bluffing but I'm not sure. I also think their argument against it is ridiculous.
They definitely have way bigger pockets than me but costs are capped by the IPO
It seems like if they had a serious case they would just need to fill in an online form to oppose it. I feel like they're bluffing but I'm not sure. I also think their argument against it is ridiculous.
They definitely have way bigger pockets than me but costs are capped by the IPO
OP
OP
A bit more info on this. I have filed a Trademark application for a video game, Class 9, it has been opposed (although not officially, but by letter from Lane iP stating "without prejudice"). The original trademark in question is Wrexham Reapers which is an esports company related to Game and owned by Beyond.lcc. My game is called The Reaper and is an actual videogame class 9 as opposed to a back room in Sports Direct in Wrexham where they don't and never will make video games but they play other people's games competitively.
"Without Prejudice *save as to* costs"?
I dont think it would stand up!
The without prejudice line is scare tactics.
I once had a letter hand delivered by an american lawyer when I had a covers band called ‘Hustler’. He came in for a coffee and explained the owners of Hustler magazine in the US paid for him to come over
At the time I owned www dot Hustler dot co dot uk.
I showed the letter to my solicitor friend and it was worded strongly but ‘without prejudice’.
They wanted me to give them the rights to the domain name instantly and without fee as they owned the name supposedly.
The band had actually split up at this time.
My pal advised me to tell them it wasnt worth the paper it was written on.
Two months later they paid me a $2.5k.
If they had a real good case against you, they would of used the correct channels to challenge your IP.
The without prejudice line is scare tactics.
I once had a letter hand delivered by an american lawyer when I had a covers band called ‘Hustler’. He came in for a coffee and explained the owners of Hustler magazine in the US paid for him to come over
At the time I owned www dot Hustler dot co dot uk.
I showed the letter to my solicitor friend and it was worded strongly but ‘without prejudice’.
They wanted me to give them the rights to the domain name instantly and without fee as they owned the name supposedly.
The band had actually split up at this time.
My pal advised me to tell them it wasnt worth the paper it was written on.
Two months later they paid me a $2.5k.
If they had a real good case against you, they would of used the correct channels to challenge your IP.
D
Deleted member 2463
LOL at all the lawyers on this forum.
the without prejudice is not a scare tactic - it’s legal 101 basic.
have they actually registered the trademark ? If so then this is just a lawyer doing what they get paid to do - defend existing trademarks.
I’d respond saying you don’t recognise the issue highlighting all the differences And see if they follow up.
the reaper though looks woolly enough that any trademark on is going to pretty challengeable.
Regards,
Neil.
the without prejudice is not a scare tactic - it’s legal 101 basic.
have they actually registered the trademark ? If so then this is just a lawyer doing what they get paid to do - defend existing trademarks.
I’d respond saying you don’t recognise the issue highlighting all the differences And see if they follow up.
the reaper though looks woolly enough that any trademark on is going to pretty challengeable.
Regards,
Neil.
Or pop their letter in the bin tbh
OP
OP
Yes very tempting to bin it and not reply. I had a very interesting and detailed PM about this and it does look like they don't have a leg to stand on. There were two possible complainants flagged up when I filed the trademark application, this one and Blizzard with Diablo III: Reaper of Souls. I didn't expect for a minute that I'd be accused of confusing customers heading to the backroom of Sports Direct in Wrexham to play Fortnight. Been up since 4am working on it. So tired.
D
Deleted member 2463
I wouldn’t tecommend that at all- because then you are allowing them to claim the assertion at a later date by not responding or not responding promptly and given this IP is expected to have value that could be expensive - our trademark lawyer at PBR specifically stated that not responding would only generate more risk. Trademark law is very different to any other IP law - I personally work on alot of patent cases.
Cheers,
Neil.
D
Deleted member 2463
But getting a trademark law expert for a few hundred wouldn’t be a miss judging by the potential value of this. lots of these legal companies just send this shot out day in and day out but they get paid to do it and to take action.
can we please get this thread back on track, with more Hustler nostalgia
As I said before. They could just object with a TM7 form. See googled info.
That would be cheaper than sending a solicitors letter.
Just scare tactics.
Do Hustler have a website…. I heard you can get porn on the internet now. Videos and everything but I can not find it!
That would be cheaper than sending a solicitors letter.
Just scare tactics.
Do Hustler have a website…. I heard you can get porn on the internet now. Videos and everything but I can not find it!
OP
OP
Yeah, my theory is that the client doesn't even know about it and this is a template free letter within the £400 odd IP filing service. I will reply nicely and highlight all the differences and lack of confusion. If they want to continue to oppose it they can. It will cost them a lot more than it will cost me so they'll have to decide if it's worth it. And I'm willing to pay the highest cost awarded that I can find on the website which is £7500. Usually it's more like £200.
D
Deleted member 2463
did the letter assert their clients own rights to the trademark?
OP
OP
It asserts that their client owns the trademark "Wrexham Reapers" and that my application for "The Reaper" might confuse their customers who may assume that the Wrexham Reapers have somehow gained the knowledge and skills to create a videogame rather than just charging people to play other people's games in the back room of Sports Direct in Wrexham. It goes on to demand that I agree to withdraw the application and promise not to use the word Reaper in any class 9 software or videogame. Their argument is that the word Reaper is wholly contained in their clients trademark.
All sounds a bit grim to me.
There are loads of trademarks regitred with the word "Reaper" - tell em to do one. Let the IPO office sort it out.
You might want to consider trying to get an ATE (After The Event) Legal Expenses Insurance policy to cover your (and their) legal costs if you think this could escalate, although depending which broker or insurer you go to, they might require that you pay for your own advice on prospects of success first.
You could try calling a company such as ARAG plc who are based in Bristol, and they might give you a bit of free legal advice first before considering offering terms.
If you have BTE (Before The Event) legal cover as an extra to say your home Insurance, you might want to check (but I'd imagine that wouldn't cover an IP dispute, and the policy limit would likely be too low anyway, as some elements pointed out, IP cases if they get serious can be bloody expensive)
Company I work for doesn't deal in the live market, however could ask a mate who's an underwriter in the live market for advice re; an ATE broker if that would help at all - just give me a shout.
I think these days ATE insurer's maybe ask for a bit of premium up front rather than fully contingent on a win, but I guess could depend on the insurer.
OP
OP
With an IP application objection the legal costs are capped and don't cover the actual amount that it would cost the complainant. The decision would be down to the IP examiner. They have until the 15th September to file an official objection. https://www.gov.uk/guidance/objecting-to-other-peoples-trade-marks-and-the-legal-costs
OP
OP
Here's the list of costs awarded https://www.gov.uk/government/publications/cost-awards-in-trade-mark-disputes
Loads of trademarks with reaper in them. I guess it’s just a case of wether you want to bogged down in paperwork.
maybe easier to just change the name of your game to ‘the wrexham’
don’t fear it even if it’s a bit grim (sorry tired after awesome weekend in Daventry)
im not an IPlawyer, just incase you hadnt noticed… but I’d think they haven’t a leg to stand on
maybe easier to just change the name of your game to ‘the wrexham’
don’t fear it even if it’s a bit grim (sorry tired after awesome weekend in Daventry)
im not an IPlawyer, just incase you hadnt noticed… but I’d think they haven’t a leg to stand on
D
Deleted member 2463
I think reaper sounds harder to maintain than you’d think when you can get a bag of crisps that are reaper flavour!!!
OP
OP
Well, after an almost entirely sleepless night spent wording and re-wording a response letter in my head I think I've come to the conclusion that it's not worth the hassle. The game was originally going to be called Beasts Shall Rise and I think I'll just revert back to that as I already have the trademark. Making games is bloody stressful enough.
Expect a cease and desist from Viagra next then
OP
OP
I think I may have pulled off one of the fastest rebranding's ever 
