Wildcard in Trademark name

'Is it legal', 'can I do this' type questions and discussions.
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Wildcard in Trademark name

Post by Pete »

This is kind of related to an earlier question I had, but after some discussions with IPO I am still a bit confused.

Is it possible to have a trademark that would cover a series of pubications each of which uses the trademark name plus an extra work for the specific context.

I don't want to disclose the actual Trademark so again I will use the example ..."For Dummies"

Would it be possible (or rather would it be effective) to register "...For Dummies" that would cover any possible subject? Surely one could not register each and every possible subject so what do you do in this case?

Partly why I'm confused is that I did actually register such a trademark several years ago and at the time I was told by IPO I could do that. However in recent discussion with them in regard to another application I was told that I couldn't, the implication being i would need a separate application for each and every possible word appended. This would obviously not be practical.

That trademark is now up for renewal so I would like to know what is the best thing to do as I don't want to waste my money on the same thing if it doesn't actually offer me any significant protection.

Can anyone please help clarify? Thanks
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Re: Wildcard in Trademark name

Post by AndyJ »

Hi Pete,

I think you are referring to a series of trade marks as defined in section 41(2) of the Trade Marks Act 1994:
(2) A series of trade marks means a number of trade marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark.
However although it is possible to register a series using a single application, that application must include all the separate marks within the series. So for example a black and white version of a graphic mark and a colour version of the same graphic might constitute a series which meets the s 41(2) definition, but you could not continue to add other marks (say, using different colours) to the list after the initial application had been processed. It is possible to split out individual marks from a series after registration (subject to paying additional fees) but I don't think that is relevant to your question.

In other words you can't just register the stem words of a series in order to protect all the possible variations. The reason is that trade mark registration confers a monopoly right on the registrant, and it would create unfairness and uncertainty if any combination of words which included your stem words could not be registered by someone else, based on the contingency that you might want to use that combination of words at some future stage. Hence although Apple would dearly love to have a monopoly over the prefix i- they can't and have to apply to register each new product separately at the appropriate time, and it also explains why the BBC can register the iPlayer. The second reason why your idea wouldn't work is that trade marks must be used in the course of trade or lose their validity if challenged. A trade mark may be revoked if there is no genuine use of it within 5 years of registration. However since your question seems to envisage a rolling period of 'registration' as each new title comes onto the market, there would be no fixed and clearly delineated starting point for the 5 year period in respect of marks which joined the series at some later date. *see afternote.

The best approach to this problem is to register a mark which contains the stem (as John Wiley & Sons Inc have done with for Dummies) in the relevant classes (presumably to include Class 16 for printed material) and then challenge any new trade mark application if it contains the words of your stem in combination with other words. This could be done during the registration process (known as an Opposition), or later in the courts either using section 10 of the TMA, or the tort of passing off. A passing off claim would only be viable if your own mark had gained sufficient goodwill, however.

For more detailed advice or explanation you probably need to speak to a Trade Mark Attorney.

Afternote (as at 9pm 27 Nov 2017). A third reason has just occurred to me. One of the grounds for refusal of a trade mark application is that the proposed mark is "contrary to public policy or to accepted principles of morality" (section 3(3)(a) TMA). If you were allowed to have a wildcard type of registration, one of the possible wildcards could be a seriously offensive word or term which would not, if submitted on its own, be accepted by the IPO. So obviously there couldn't be some method which circumvented this ground for refusal.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
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