My first trademark - what variations accepted as a "series of trade marks"?

Why would you want to insert an exclamation mark in the logo? Just curious!

Only an IP lawyer could really tell you if that exclamation mark will change anything in the eyes of the IPO unless someone here as done exactly the same thing.I wouldn't submit based on my own or anyone guessing, as it could be costly for you.

Using an exclamation mark could be seen as replacing the letter 'i' for example, so that then potentially changes the word from zoobks to zooibks as you are saying you want to trademark the logo not the text so that it covers the text. It's just that small conflict that could be viewed that way.

So I see your 2 samples are 2 different words. If it was zoobks and zoobks uk then i'd call this a series as in the main logo, and the second, there is consistency in the main word.

Logic also tells me if it's submitted as a series then they are both rejected, but again, you'd need to be the expert to give you a correct answer. Which I guess is why only the straightforward submissions are done DIY. Thing is, you not only have to submit again....you have to pay again too.

Thanks indizine! Maybe best if I trade mark the text with the exclamation mark only, i.e. zoo!bks (trust me, it makes sense in practice), and have zoobks as a variation. Forget the logo, with those two taken care of, there is no need to trade mark the logo as the logo is based on the text anyway. So no plans to submit the logo image.

The great thing about a forum is crowd-sourcing - someone might know the answer. I suspect using a lawyer is an expensive way to be told "it's up to the interpretation of the IPO" - which  I knew anyway.

Another way to view it is what would happen if I submitted zoobks and zoo!bks as two applications. Would they conflict, and therefore the second be rejected due to the first? If so, they should be allowed as a variation!

Think I've made my mind up to register zoo!bks with zoobks as a variation. I think that even covers seeing the exclamation mark as a 'i'.

cheers!

Ah, but the IPO lawyer actually will know what will and what won't get rejected - that's the whole point of them doing it for you and why you pay them, so that it's guaranteed to be accepted. 

I still see the second variation as a completely different word, albeit close, but that's just how I read their interpretation of what a variations means. I would be interested to see what the outcome is none the less.

With that example of the similarity I see what you mean but you know what would happen? The company who owned the first trademarked name would stick in an objection....and they can do that even after yours has been accepted.... and get it removed, as it is too alike. That's what I think anyway.

Put another way, would you ever try and trademark 'virg!n'? A lot of things are down to someone putting in an objection if not during, but after acceptance. And if it wins, you have wasted your money. Again, one reason why the IP lawyer does their extensive checks and advises you with caution.

I'm just being objective for you by the way, giving you things to consider.

Hi.

You are correct in that a series mark has to have very minor differences, for example zoobks and ZOOBKS- this would be a series mark. I am not offering 100% certainty here but in my view- it will be viewed as a different mark and will not therefore be accepted as a series mark.

If you did apply for 2 and it is rejected as a series the UKIPO will give you the opportunity to delete one of them-you will not lose the whole application.

Hope that helps!

Jane@trademarkroom.com

Thanks Jane and Indizine,

Any thoughts on singular vs plural, i.e. register zoobks and zoobk as a series?

A big relief to hear they would let me choose which is definitive if rejected as a series. Sounds like £50 per variation is better value than £1k for a lawyer? Just a guess...

very many thanks for advice from both of you.

Thanks Jane, you were right. I went ahead and ordered a series of five (singular and plural, plus logo). They came back allowing me to choose one, and give comments - which I did. I went for zoo!bks (as text) on the basis that my logo etc looks like that, and if anyone (possibly including myself) registered zoobks (in the same class) I believe it would be considered too similar.

I'll update with the IPO's final decision.

The IPO came back refusing the series as not similar enough. So went ahead with a single trademark, which has been accepted. I decided the single one should have the exclamation mark in the middle, as the logo is based on that (so would have no problem putting (R) on the logo).

Conclusion - IPO very strict on what they consider a series. It's probably not worth the bother, as if close enough to be a series then it would be an infringement if someone tried to register it with such a similarity.

But they rejected the others in the series as they were not similar enough, so that means someone could come along with one of those others on an individual basis, and it would be accepted. It would anyway if it was in a different class.

Here's the wording the IPO used in their response to me:

The test of a series is NOT simply whether the marks in the series would be regarded as confusingly similar to each other if used by unrelated undertakings. Any variation in the non-distinctive features in the marks must leave the visual, aural and conceptual identity of each of the trade marks substantially the same.

I read that as they don't accept my argument, i.e. that if "confusingly similar" then they are a series. They are saying the judgement is stricter than that, they must be substantially the same (whatever that means). If someone did come along and register something (in the same class) that was "confusingly similar" it would be rejected.