

Ask HN: Help Is it worth rebranding (trademark infringement)? - ayusaf

I'm one of the Cofounders of a startup called Super Owl and we are busy working on an iPhone app which delivers spoken word content weekly to subscribers.  We have recently been featured as part of a Next Web article about 'How Startups Choose their names' - http://thenextweb.com/insider/2011/12/03/9-startups-explain-how-they-chose-their-names/<p>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<p>I e-mailed the following reply:<p>--------------------------<p>"Hi <i></i><i></i>,<p>I haven't heard of <i></i><i></i>* before - just looked at your website and it looks like a great service.<p>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', '<i></i><i></i>' or 'super owl'?  Obviously, if it's the latter I can appreciate your concern.<p>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.<p>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.<p>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 <i></i><i></i><i></i><i></i>*.<p>Best of luck on your launch.<p>Regards,<p>Aisha Yusaf"<p>--------------------------<p>I have now received the following letter as a reply to my e-mail - https://skitch.com/aishay/guy2a/letter2<p>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.<p>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.<p>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).<p>Any advice, help or suggestions would be most appreciated.<p>Thanks :)
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_millymoo
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...](http://www.techhub.com/magazine/read/techhubs-startup-resource-
centre_198.html)

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.

~~~
ayusaf
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.

~~~
_millymoo
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.

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

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

------
n9com
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.

~~~
ayusaf
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.

~~~
18pfsmt
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.

~~~
ayusaf
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?

~~~
n9com
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.

~~~
ayusaf
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.

------
mseebach
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.

------
notahacker
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...

------
aestetix_
(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.

~~~
ayusaf
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.

------
18pfsmt
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.

~~~
ayusaf
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.

