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.

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.

To that end, I think you should start by doing a search here:

http://www.ipo.gov.uk/types/tm/t-os/t-find/t-find-prop.htm

If they hold the mark, I would re-brand. If they do not, I would try to launch as soon as possible with an MVP.

Yes, they do have registered trademarks. Do you think we should rebrand even if we both have different names (with only thw 'owl' part in common), different branding (colour, design etc) and a completely different owl mascot / logo?

What's the company's name? Can't give you specific advice without knowing this. Also, take a look at the company's accounts (buy a digital copy via companies house for £10) - see if they are even in a position to take legal action.

However, just bare in mind, even if you are 'right' and you are not in violation of their trademark, if they have the money there is nothing stopping them from taking you to court after they have tried amicable means to solve the dispute to no avail.

Just to give you an example, I learnt the hard way that even when you are right, it is often better to settle than spend thousands trying to fight - especially if the other party has deep pockets.

I had a legal dispute before where I was legally in the right - 99% chance of success in court, but we decided to settle as going to court usually means everyone loses but the lawyers. It's also pretty stressful. Pick your battles.

I see you have experience of the 'picking your battles' thing and that is exactly what we need to do. This has been very useful and given me valuable perspective. I'll research as necessary and definitely post back here as to how we proceeded.

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.

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.

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.

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.

They have listed the 2 trademarks in letter 1. I guess thats what you are asking for advice about?

So they have, I only skimmed it. My bad.

I think it's worth calling out and appreciating the fact that they are approaching you in a calm and reasonable manner instead of through a huffing and puffing lawyer nastygram.

It reads a lot to me like they are willing to negotiate a mutually beneficial agreement. Go meet them face to face (if practical, I think you're both in London?) and bring a list of the key features of your owl, logo and name and how it differs from theirs and see if you can give them some guarantees to keep yours different enough from theirs to avoid confusion going forward.

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...

(note, I am not a lawyer)

I've dealt with this exact issue before, although through US law and not UK law. One thing I found is that a lot of places who have trademarks have to send out notices like this in order to maintain their ownership of the trademark.

That said, it's hard to get context on this with the information you've given us. Did this message come from a lawyer, or just an executive working there? A name change can kill a company, and the burden is likely on them to demonstrate that you are directly impacting them, which is hard to say without knowing anything about them. Do you think they have the resources to bring an infringement suit on you?

Trademark infringement can be hard to establish. A quick example: in the US, there are over 30 trademarks on the letters "AMD", for all kinds of different purposes. Trademarks are more than just a name, an infringement has to meet multiple standards.

I would look at the law on the books (in the US it's at uspto.gov, I don't know about the UK) and proceed from there.

Thanks for your reply. In answer to some of your questions - no, this letter is not from a lawyer, it's from the company's chairman. Their trademark was registered in 2010 and I can not confirm if they have the resources for an infringement suit, although I do know that they have not actually launched their product as yet.

I appreciate that the information is a bit limited but my intention is not to publicly name and shame so I have tried not to divulge too many specific details. I can say though, that what we share in common is the word 'owl' in our names, we are both building apps for audio content (in their case audiobooks) and in our case radio programmes / podcasts. Our owl logos also look very distinctly different.

The company who is pursuing us, from their letter, seem to feel that we should rebrand and I am wondering if they really have any grounds or are just being a bit pushy. As you mentioned there are several trademarks for 'AMD' in the US and I've found there are also several trademarks that include the word 'owl'. Of course if we had unknowingly named and branded our company exactly the same name as another registered trademark then we would be seriously considering a change. I am not convinced if it is warranted in this case though.

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.

For us wisdom is a positive connotation and also due to the owl's hearing range: http://en.wikipedia.org/wiki/Owl#Hearing

But, that's probably a bit off topic - our name and the mentioned company's name has the word 'owl' in common, in our case alongside the word 'super' in their case alongside other word(s) so I am investigating how much, if at all, there are any breach of trademark grounds here.