TradeMark Advice

[Pepelux71]

Few months ago i registered xxxxx.co.uk (xxxxx is a compilation of three dictionary words, so it's also a common phrase). The same phrase by its self is a registered UK trademark, just as a phrase whithout extention, for some industrial classes since 1999. The same phrase also with the .com extention (xxxxx.com) is a registered international trademark for internet,software etc. classes since 2000.
I want to register as a UK trademark my domain with the .co.uk extention, for the UK terratory and not international, first of all to be sure that i will be able to use it, and secondly that nobody could ever ask legal this domain.
I have two questions...

1. Would that be enough and safe for me and the domain?

2. To avoid any rejection by the UK Patent office shall i use exactly the same classes as the xxxxx.com case or should i trademark it for completely different classes?

Any help is valuable
Thanks in advance

 

[Dave Zan]

Have you asked your UK-equivalent trademark "office" regarding this?

 

[Pepelux71]

No, so far i have only search for details at the UK's patent site

 

[jberryhill]

should i trademark it for completely different classes?

You don't seem to understand that trademark registrations are not simply handed out in a vacuum. If you plan to use, or are using, the domain name in connection with a class of goods or services, then you might consider seeking registration in that class.

 

[Pepelux71]

Actually i've never been involved in a situation like this, so everything is completely new to me. My first care is to ensure that i wont loose this domain in any way and secondly to use it.I haven't decide what kind of site should i develop but this will be depended by the class they will accept. I'm afraid of a rejection in the case i want to use the same classes as at the .com situation.
Shall i count on the .com approval and use the same classes or this could be a reason to reject it.
Maybe i am out of the point but I dont know how it works.I just want to use the name no matter the classes.

 

[Dave Zan]

I think what John meant was that you need to be as specific as you can when
and where you want to apply for the trademark for. For example, if there's a
class for selling buckets and that's your line of business, then that's where you
should register the trademark name.

Note that trademarks are not all-encompassing, meaning they only cover just
one or so fields you'll be approved for and won't cover others. Just because
you're applying for a trademark to the words, phrases, symbols, marks, etc.
you want doesn't mean you have absolute exclusive rights to it in all other
fields where the similar or same thing is used.

Check with your local trademark office and inquire what "classes" they offer,
then try to tie it in with your intent. If possible, retain an attorney who works
on this field to strengthen your chances.

Good luck!

 

[Pepelux71]

Note that trademarks are not all-encompassing, meaning they only cover just
one or so fields you'll be approved for and won't cover others. Just because
you're applying for a trademark to the words, phrases, symbols, marks, etc.
you want doesn't mean you have absolute exclusive rights to it in all other
fields where the similar or same thing is used.

In this way, shall i guess that i may use the xxxxx.co.uk for other purposes than xxxxx.com whithout to trademark it?

 

[Dave Zan]

Note that trademarks are not all-encompassing, meaning they only cover just
one or so fields you'll be approved for and won't cover others. Just because
you're applying for a trademark to the words, phrases, symbols, marks, etc.
you want doesn't mean you have absolute exclusive rights to it in all other
fields where the similar or same thing is used.

In this way, shall i guess that i may use the xxxxx.co.uk for other purposes than xxxxx.com whithout to trademark it?

Don't guess. Find out.

Questions:

1. What line of business (if any) are you intending to use the name?

2. Does your local trademark office provide a class for your intended use?

 

[Pepelux71]

1. Actually it will be a sports and/or bet related site but i dont have a buisness behind.
It will offer info and links about sports and betting.
2. I live in Greece but as i don't have any company or whatever i think that my local trademark office has nothing to be involved in.

 

[Theo]

Pepe, NF = Nea Filadelfia? :-D

 

[Pepelux71]

He he....No...that would be obvious....
Nea Filothei... ;-p