Trademark infringment - help please!

[Mmmpomello]

Hi everyone, I really hope someone can give me a little advice here.

I'm having a bit of trouble with a trademarked business disputing my use of an identical name in a very small area of their services. Think: they are primarily a bookseller who also has some totebags, but they are hidden behind the counter, so not obvious and a very small part of their business. Whilst I have a clothing business that also makes totebags.

Amonst books, they've trademarked totebags. I have responded promptly and stated that I will change the name, and made all immediate changes in my control. They suggested a deadline of a month to completely remove the name. Some changes I literally cannot make for 15 days (FB name), which I clearly told them, and they have acknowledged. Again, this is their suggested deadline.

Two days later they are now harrassing me and are stating that I cannot operate at all under the name even in the sale of clothes (i.e. areas that their name is not trademarked against). They are posting on my business socials and I think trying to damage me before I've had chance to act - I'm finding it really stressful (posting this as 2am).

Surely I should still be able to 'make clothes' until I change the name? Can they ask me to essentially cease promoting or advertising anything at all? They are threatening getting lawyers and have called me naive and foolish, but I think this is an unjustified threat (I am not posting/advertising anything about totebags).
To be clear, whilst this is really upsetting to lose my business name, I am obliging but I cannot perform miracles.

Stupidly I have almost done the work for them by researching their classes and telling them which ones are the potential overlap. They think we overlap in our 'passions'. To be clear, there is no chance of our businesses being confused - this was brought to their attention through someone misspelling a FB tag, not because they literally thought we were the same company. We operate in different areas and this has had zero impact on their business (however, they are impacting mine).

Can anyone offer some advice or know where I can get free legal advice on this?

Just to summarise: I am willing to change the name and have done this where possible, and have ceased advertising/posting on socials about totebags. But I still want (and need) to be able to post about clothes until I can make all the changes.

Presumably you've had a cease and desist letter from them?
You need to stop trading using that name immediately.
They are doing the right thing by actively protecting their trademarked name. Its one of the things that you are told to do when you apply for a trademark.
Why can't you change your business name on social media today?
You cannot trade at all using that name now that you have been put on notice that it is trademarked.
Why didn't you check the trademark register before using the name?
Close your socials down until you have a new name

You mustn’t get free legal advice on this because it’s too important and much of eg what’s in the post above is incorrect and detrimental to your position.
min fact it sounds you should tell them to take advice as someone will tell them to cool their jets as a lot of what they’re telling you is incorrect.
yes - as proprietor of a registered mark they have an obligation to protect it but there’s also a “use or lose” element to it. If they hold registrations for classes that they don’t use but which you do, then you are able to apply to strike out parts of their registration. Added to that, either you or they could hold an unregistered mark (just as valid but harder to prove) for other categories of goods and services.
how long have you been using the mark on clothing / are they producing or have they ever produced any items of clothing u der the mark? Etc etc
ultimately the commercial implications will determine what’s worth fighting for either of you, but if you are a clothing business which has used the identical mark on different goods then you’re perfectly entitled to use it (unless there’s passing off because you’re trading on their reputation/ causing confusion among the public. Very complicated to determine and expensive which is why registered marks help).

Rather than giving up your website address, it could be that you should be taking advice on registering your own mark for the classes that you use and they don’t. This sounds so much like a situation for a coexistence agreement rather than a cease and desist - let them take legal advice and find that out for themselves.

Do you have legal cover as part of your business insurance ?
Mine was a godsend when someone copied one of my registered designs and sold it on etsy as a png with a commercial license . Not only did they end up having to destroy their existing stock, they also paid me compensation and had to tell their customers to stop using the design and refund them.

All of which is going to cost her more money than a small craft business is likely to ever make.

Vermin clearly knows her onions. I think her post underlines that no-one can tell you what the deal is here without looking at it properly. Based on your OP, you could be dead in the water (meaning, basically, you have to rebrand) or this may be something you can pretty much ignore (except that I would want to be stamp on any defamatory social media posts).

Re the PP about costs, this cuts both ways because, unless the thing is very cut and dried, it could cost the other party many thousands to take you to court.

If I were you, I'd get on the CITMA (trade mark lawyers' institute) and go to this tab: https://www.citma.org.uk/trade-marks-ip/find-an-ip-firm.html. The firms on that page have chosen to advertise there so are less likely to mind you giving them a ring, and you may find yourself with some impromptu advice over the phone. If you don't get anywhere with the first one, try the next.

Thanks everyone. Just to clarify, it's related to services and not goods. So I offer services A B and C and they offer services G Z Q but a bit of C. I want to continue to post social updates on services A and B because it is important to my business and clients that I do so. Going 'dark' would be a detriment to me and therefore I don't want to do this unless I absolutely must.

I think I need to be clearer. The main points where I need clarity are:

• they have sent me an email asking me not to use the name. I don't even think that is a cease and desist as they did not detail how and why there is infringement or give any conditions. Any thoughts here?

• I replied to this, highlighted where there was potential overlap, and stated that I would change. I took immediate action and indicated where this isn't possible you cannot change a Facebook page name twice in 30 days). They replied acknowledging this fact and gave me a month to remove the name. I have taken this as an agreement of terms, is that correct?

• I since posted on socials about service A. They commented publicly on it, which I removed, and wrote them an email asking them to please adhere to their terms of a month and to behave professionally.

• they then replied saying that the 'best thing' is for me to shut down everything, and saying that I am lucky they haven't got their lawyers onto me, and that I am naïve and foolish.

• I calmly replied that service A has nothing to do with them, that I am meeting their terms, and I don't appreciate insults or unjustified threats. I told them that I would not respond until after the term period.

Regarding the two points above, this is genuinely causing me huge stress and affecting my health (I have anxiety) and it has stopped me doing two full days of work. It has lost me money.

So... I have absolutely no interest in a legal battle, or being associated or confused with this company. I believe that I have acted correctly, honestly and with actual kindness to them. What I just need to understand is whether I am in my rights to continue with service A (i.e. no overlap) whilst the name change is still going through (out of my control).

In the meantime I am also absolutely not prepared to continue to have my wellbeing and business affected by them by receiving threats or insults.

Look up your local business and IP centre. (Google BIPC) there is one at southampton library for example. There are IP firms that will occasionally run drop in appointments (including via Zoom) from them offering initial advice. You don’t have to be local to make use of the BIPC service so there is no harm in contacting one that is a distance from you.

My trademark law is very shaky but from the points you make it does sound like you need to speak to a qualified professional who can point you in the right direction. As another poster said this is not something that you want to take unqualified advice on via the internet.

Again, it depends on their registrations and actual areas of activity (registered or unregistered) for you and them.
there are multiple different coexisting registrations for “Ariel”, not just washing powder and someone can’t be prevented from using it in relation to goods / services not covered by the washing powder registration.
you are entitled to use registered or unregistered for areas that do not conflict with third party actual use. Even if someone has a registration that they don’t use, you are able to apply for it to be set aside for lack of use. From the very little you have said and without taking into account other businesses, you are able to continue to use the mark for service A
the respective commercial position of course needs taking into account as I said in my original post but I’ve no idea where @Flopsythebunny gets the notion that yours is a small craft business from. If this is your livelihood, then you need to protect your own unregistered trademark as much as they need to protect their registered one(s).
look up coexistence ageeements and don’t be bullied but this is not a good area for amateur dabbling.

Thanks. I am trying to get some advice but being a weekend it's not easy.

Can you clarify - if they are registered in a class but detail exactly what they are covering in, say, class 50, e.g. outline service B and C, and I offer service A but that would also be registered in class 50, there is still no infringement? The classes are so broad.

Again just to reiterate, I am proceeding to change my name. I just want them to actually let me do this. I cannot invent a time machine or do 3,572 jobs at once. I don't want to be confused with them, as I don't like many aspects of their business. So whilst I may get advice to challenge this and not change my name, it is not worth the battle for me. But it is worth me sticking up for myself so that they do not damage my business unlawfully in the meantime and I certainly do not want them posting on my social media!!

Is the dispute the name you are using or the product you make? You need proper legal advice if you can afford it, or start reading up on the rules quickly
https://www.gov.uk/intellectual-property-an-overview/protect-your-intellectual-property

A tote bag is a very generic description so is no more protected than, dress or car. A design, brand name is much tricker.

If you do not have the money or legal cover to fight this, then chalk it up to experience and cease using the business name with immediate effect for all products. So many people set up these small craft businesses without doing any prior research and if this company has taken the time to register trademarks, they have far bigger boots on than you. Yes it's costing you in lost sales, but that is why due diligence should be carried out before starting to sell things. It could have been avoided.

A trademark registration gives the owner the right to take action against anyone using the same or a similar mark for the same or similar goods and services. Based on what you’ve said, you’re using the same mark for similar services so it doesn’t matter that their registration doesn’t name your exact service if it’s similar. The closer the mark and goods/services to their registration, the stronger their case will be. As you’re using the same mark for similar services, you’re operating in a risky area.

As above posters have said, CITMA are the UK professional body for trade mark Attorneys, you should contact one of the listed representatives for advice. Looking for a small regional firm will often be more cost effective than the big National firms. I hope you get sorted quickly.

Basically: I am an independent artist. I create large-scale pieces and offer performances and hire service. I also deliver community projects and large-scale events, so deliver workshops, mostly for non-profits. They are an environmental company selling dedications and services. But they have trademarked education and craft workshops. There is nothing on their company info or website about this service apart from a listing of one workshop later in the year on a calendar. Hence me not identifying this overlap.

During the name change I want to continue to post about my performances and personal development, e.g. material use, studio, etc. Nothing to do with workshops.

They have said that I cannot do this and have used the above approach.

Again, I do not want to infringe on their trademark. I don't want to challenge their name where there is an overlap. But I cannot just cease to be an artist in any form and go dark for 30 days. Having social media and a website is essential for me.

As far as I am aware, posting about my development as an artist, and about performances, is completely unrelated to their business.

I have to admit I’m not sure why you agreed to change the name of the clothing business when all you needed to do was stop selling tote bags with their registered trademark.

Its just an email. It’s the equivalent to a neighbour emailing you not to park in their spot, fair enough, but then going on to tell you not to park in the public street outside their house.

Personally I’d just register the name in the appropriate class for my business and carry on, it costs £170 for a single class registration with the IPO.

Not sure where everyone is getting this small craft business stuff from. This is my livelihood and I am a nationally recognised, award winning artist.

This is what I'm thinking - it's not an actual cease and desist letter.

I just want them to stick to their terms, which they set out, and allow me to actually do what they ask. But I also want to protect my own business and livelihood.

...which is not tote bags.

Is it possible to stop posting over the weekend and get a trade mark attorney or IP solicitor to contact the other side on Monday? Trade mark infringement is hugely complex and depends the likelihood of confusion which takes into consideration many different factors. Without knowing the details of the registered mark and the way in which you’ve used it, nobody will be able to give you any decent advice. The safest thing to do is to avoid any conflict until you can get proper tailored legal advice.

It may be an overzealous social media person if all you have had is emails and Facebook comments.
Ask them for a formal response? Make then spend money on legal advice. Then you'll have something clearer to work from. And it will buy time while the name changes.
I have a template cease and desist letter I use as needed to protect my trademarks and IP. Id send a polite email, followed up with the letter. I don't make comments on social media.

So register your own trademark then. It may be your livelihood, but you are still a very small fish in a very large pond and you have not taken any steps to protect that livelihood yourself.
I have previously purchased sunglasses from a company far bigger than you as an individual artist and they have had to go through a full rebrand due to trademark infringement. It wasn't even the same name, just similar enough.
A dance hall local to me was called The Ritz Ballroom and after legal involvement from the Ritz Hotel they had to change their name, despite being a completely different type of business. They shut down in the end, it had cost them too much trying to fight it.
As I said, if you haven't got legal cover or deep pockets, you are going to have to make a big decision, and the wrong one could cost you far more than just your job.

Just to say this again: I am changing the name. I am meeting their terms that they set out on email, of making all changed within 30 days.

I just need advice really on continuing with service A, which they do not provide and there is no confusion, whilst I make the changes within that period.

If you've had no cease and desist, keep going as usual while the name change goes through.
Inform your customers/audience/mailing list what going on. If they keep commenting delete them and think about naming and shaming. From what you said here they're not behaving professionally.

I think this is what I will do. I am doing what they have asked and they cannot change terms. Not that they have even done this correctly or professionally.

Prior to their posting and email I was prepared to go above and beyond to aid this but now it will be at my timescale, within the period they outlined.

I am quite shocked at how unprofessional they are being whilst spouting how amazing and important the are. And they have zero empathy or understanding which I think is an awful trait.

I have a bit of experience in this area and if the trademark they have trademarked is actually a term that was in common usage for years before they trademarked it (as "totebags" would have been) then the trademark can be shown to not be sufficiently distinctive and you can apply for them to lose their trademark.

This was the basis for the trademark of the term "cocky" being successfully challenged and withdrawn after it had been registered.

I have even seen a big publishing company try to trademark the letter "A". It didn't go well.

The fundamental issue is the trademark registration process never actually properly checks whether the term is unique and distinctive, it's down to individuals whose livelihoods are put at risk to push back and register their objections during the objection period.

"Absolute grounds cover defects in the trade mark itself. The most common reasons for opposing a trade mark application is that:

• the trade mark is descriptive of the goods and/or services
• that it is generic for those goods/services
• it’s non-distinctive and should be free for everyone in that line of trade to use" Source: https://www.gov.uk/guidance/objecting-to-other-peoples-trade-marks-and-the-legal-costs#opposing-a-published-trade-mark

If they have really trademarked the term "totebags" then it should be opposed on all three of the above.

I know you are wanting to bend over backwards to accommodate them but really you shouldn't pander to people who have trademarked basic, common things because it encourages them and legitimises what they are doing, the better course of action would be to challenge their fundamental trademark which is free to do during the objection period.

Also who is sending you these threats because according to Gov.uk the trademark for "totebag" was refused and there's nothing similar registered (see screenshot).

OP, please don’t act on anything anyone has posted on this thread. This is a complicated area and you need advice. No-one is going to give you what you need on social media or over the weekend.