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Alex J.
Alex J., Solicitor
Category: Law
Satisfied Customers: 3695
Experience:  Solicitors 2 years plus PQE
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Hi there. Were setting up an online service business from

Customer Question

Hi there.

We're setting up an online service business from the UK.

People will pay a monthly subscription to use the online service.

The service will be used globally and will be charged in $, £ and euro.

The company name we wish to use is fine in the UK, but a similar (but not the same) name is XXXXX XXXXX the USA.

The name format we want to use is Firstword Secondword.

The trademarked name in the US is Firstwordsecondword.

We are considering branding it to look like Firstword.Secondword as this is how the domain that we have bought will look.

The company that have trademarked the name in the US, don't actually trade using that name and are using something different.

The majority of our subscribers will come from the USA.

Questions:

Can we just register the company in the UK, or will it have to be registered with all countries where there are subscribers?

Do we have to take US trademarks into account, or does it not count as we are a UK business?

Thanks in advance for your help!
Submitted: 3 years ago.
Category: Law
Expert:  Alex J. replied 3 years ago.
Hi,

Thank you for your question and welcome.

My name is XXXXX XXXXX I will assist you.

Is the logo you are using in anyway similar to the USA logo?

Kind regards

AJ
Customer: replied 3 years ago.

Hi AJ


 


Thanks for coming back to me.


 


I can't comment on the logo of the company that is trademarked, as I can't find that they are in operation under that name.


 


Here is the link to the trademark I found:


 


http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4805:p2v4d0.2.2


 


As far as I can gather, this company are only operating as HRworks, here is a link to their site:


 


www.hrworks.com


 


They are a recruitment business based in Atlanta.


 


We have bought the domain:


 


www.source.works


 


We are thinking of including the . in our branding so that on the site it looks like


 


Source.Works


 


The font will be fairly standard.


 


There are other companies with a similar name around the world:


 


Source Works Limited - based in the UK - Software Development company - no website, appears to be one man band called Steven Thomsit - http://www.opencompany.co.uk/company/06664562/source-works-limited


 


The Source Works (www.thesourceworks.com)- seems to be a Belgian one man band called Peter Soetens - be.linkedin.com/pub/peter-soetens/0/376/945. Again Software related



SourceWorks (www.sourceworks.com.au) - Australian, one woman band called Carly Burnham. Environmental consultancy



Sourceworks Inc (www.sourceworks-inc.com) - Recruitment business, 1-2 man band, based in the US



Our online business will provide a service to both recruitment companies and internal recruiters within corporations that want to improve their ability to find talent.



In addition, we are planning on offering supplementary services including traditional contingency recruitment, recruitment training, psychometric assessments and recruitment strategy.


 


Hope this is enough detail, please let me know if you need anything further.


 


Thanks


 

Expert:  Alex J. replied 3 years ago.
Hi,

Thank you.

Generally speaking if
(i) there is no risk of confusion between the two businesses in the eye of the public
(ii) you are trading in different geographical areas
(iii) Their trademark is not registered in a Geographical Location where your business is based.

You should have no issues, and any risk could be minimised by creating a distinctive logo under which you can trade.

The problem you have will be if you begin actively marketing in the USA - at this point you are trading in a country where there is a registered trade mark that is the same as your trading name in name and sells similar services. It would then be entirely the prerogative of the Trade Mark owner if they wanted to take action against you.

I would suggest you create a unique trading style/logo for your company and try and register it yourself in the the UK. I would then build up a good will and brand indentity in the name in the UK before you consider actively marketing it in the USA.

I look forward to hearing from you.

Kind regards

AJ
Customer: replied 3 years ago.

Thanks for this AJ, very helpful.


 


If we work on the assumption that the organisation who hold the trademark were very kind and allow us to trade under that name, where would that leave us with the company called Sourceworks Inc - they haven't trademarked Sourceworks but are using the name.



Would they have any legal right to complain?


 


They are based in the US and we do plan to actively market over there.


 


Thanks

Expert:  Alex J. replied 3 years ago.
Hi,

Thank you.

Source works Inc - the issue here is if they were trading in the UK they might have a claim for Passing Off - this is where some unfairly rides on the back of the reputation of another to take an unfair commercial advantage.

WHile I would not preclude accepting orders from the US, I would consider carefully whether you should actively in the US until such time that you have established a trading history and goodwill in your branding in the UK.

The easiest way to solve this would be to get a licence from the US company to use their registered trade mark. Then Source Works Inc wont have any complaint.

I look forward to hearing from you.

Kind regards

AJ
Alex J. and 2 other Law Specialists are ready to help you
Customer: replied 3 years ago.

Sorry AJ, one last thing.



Would calling the company


 


Sourcing Works Limited


 


be sufficiently different to


 


Sourceworks


 


Thanks

Expert:  Alex J. replied 3 years ago.
Hi,

Thank you.

I think so, conceptually they are different words, but they are generic words put together in an generic way for the recruitment industry.

What will really set you apart is you have a corporate logo and trade history that goes with the words.

Kind regards

AJ

Customer: replied 3 years ago.

Great, thanks Alex

Expert:  Alex J. replied 3 years ago.
No Problems.

I wish you the best of luck.

Please do not hesitate to contact me if you have any follow up points.

Kind regards

AJ