Ask HN: Help Is it worth rebranding (trademark infringement)?
This was a nice bit of early press for us and we were surprised but delighted to be approached. However, very soon after this article went out we received a letter from a company stating that we have "breached their trademarks". This company is another startup, yet to launch their app publicly, however they claim that they are an established business - see their first letter to us here - https://skitch.com/aishay/guy25/letter1
I e-mailed the following reply:
--------------------------
"Hi ,
I haven't heard of * before - just looked at your website and it looks like a great service.
I'm slightly confused about the letter attached as you state that Super Owl breaches your trademarks - have you registered a trademark for the name 'owl', '' or 'super owl'? Obviously, if it's the latter I can appreciate your concern.
First of all to clarify Super Owl is not a streaming service for audiobooks so it's quite different from what you're doing (we are aggregating spoken word audio podcasts for download). As yet, we also are not related to anything in the book space and our future plans don't include audiobooks.
Owls and audio are what we appear to have in common and I hope we can agree to differentiate ourselves in the market through product, logo, marketing, service etc. A quick search in the iTunes store reveals several apps with the word 'owl' included and I haven't seen this as a major setback or concern.
I hope this puts your mind at ease, however do feel free to contact me if you would like to discuss anything further. You can get in touch by e-mail or give me a call directly on *.
Best of luck on your launch.
Regards,
Aisha Yusaf"
--------------------------
I have now received the following letter as a reply to my e-mail - https://skitch.com/aishay/guy2a/letter2
So, here's my dilemma, do we change our name?... I don't feel like we are infringing any trademarks even though we do share the word 'owl' in both our business names. As we haven't even got a product out as yet we don't want to waste our time or money on legal fees or petty issues but rather concentrate on building, selling and promoting what we make.
The business that has been pursuing us on the trademark issue also doesn't have a product out (even though they speak as though they have) and although we can rebrand what we're doing, as it's not going to make or break our app, I am concerned that by doing so we are being bullied or coerced into doing something which is not even necessary.
At this stage no one really cares about our product and if we're lucky some people might care once its available to use and buy, so we don't have time or energy to spend on the wrong things (such as this).
Any advice, help or suggestions would be most appreciated.
Thanks :)
19 comments
[ 77.3 ms ] story [ 253 ms ] threadThere 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.
At this stage I am looking for general advice, as you mentioned and the replies posted here, including yours, are useful.
If there's (expected to be) confusion then one mark damages the other.
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.
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.
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.
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...
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.
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.
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.
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.
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.