Three Things Thursday | Legal Tips!

Hello, and welcome to our weekly LinkedIn newsletter!

Every Thursday, we share three valuable insights based on discussions during our Savvy Shay Business Club. This week, we cover important topics like trademarking your business name, sending cease and desist letters to infringers, and licensing third-party content in your training programme. Keep reading to learn more!

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1. If I register my full business name as a trademark, but then we start more often using an abbreviation or acronym of that name, can I stop businesses that use that abbreviation or acronym from doing so?

A registered trademark confers upon you a monopoly to use your registered mark in the classes in which you have registered it and in accordance with the specification in your application.

This means that if you registered the name Small Business Legal Academy as a word mark in a certain territory eg the UK and then somebody else starts using Small Business Legal Academy in the same or similar field in the same territory in which you have registered the mark, you would be able to prevent them from doing so.

However, if you only register the full name as a word mark and another similar business starts using an abbreviation or acronym of that registered name, eg SBLA, you would not be able to prevent them from using it, as you do not have a registered trademark for that name.

There is a chance that you could have an unregistered trademark in that abbreviated name or acronym - if it had built up sufficient goodwill in that abbreviated name or acronym - and that a claim for passing off could potentially be brought - but that would be a lot more time-consuming, costly and difficult to bring than a claim for infringement of a registered trademark.

So if it does become the case that the abbreviated version of your name or acronym of your business name is becoming more associated with your brand, and it is something that you want to protect, you should consider trademarking that abbreviated name or acronym, in addition to the full name.

Savvy Shay Business Club members have full access to our trademark course, in which we explain whether it is worth trademarking (or indeed it is possible to trademark) your business name or other brand assets and walk you step by step through the application.

2. I have noticed that another business owner who offers the same services as I do is using my business name in relation to which I have a registered trademark. Shall I send a cease and desist letter?

If you discover that another business or organisation is using the same mark as your registered trademark, the first thing to do is to gather your evidence of the infringement, such as taking screenshots of any online infringements (ensuring that the date is noted) or taking notes of any reports from third parties that the mark is being used.

It is always better to try to have an informal conversation with the infringer before sending a cease and desist letter.

Often, when the infringer realises that they are actually infringing a registered trademark, and that there is the potential of legal action, they will quickly desist from using that mark.

It’s best to try to have this conversation over the telephone, but if you have tried and the infringer is not answering, or it isn’t possible to get a phone number for them, then an informal email is the next best thing.

I would write something along the lines of – “it has come to our attention that you have been using our registered trademark, namely X in relation to the same services that we offer. It might be the case that you don’t realise that you are infringing our registered trademark, so we’re happy to give you until X date (generally a time period of seven days from the date of the email is suitable) in which to confirm to us in writing that you will cease using this particular mark. If we don’t hear from you within that time period, we will need to look into taking legal action, but I very much hope that legal action can be avoided. I look forward to hearing from you.”

If you don’t receive a reply within the requested time, then you would move on to sending a more formal, cease-and-desist letter, a template for which is in my template library.

You do need to be careful when alleging trademark infringement as there exists the concept of “unjustified threats”, and if it is proved that you do not own the trademark or that there has not been an infringement, you could find yourself the subject of an unjustified threats action, and having to pay damages and for the legal costs of the other side.

3. As part of my training programme, I license in third party content. What should I say in my terms and conditions to deal with this. Presumably I need to change the clause that says “I am the sole creator of the programme materials”? How do I ensure that the participants don’t use that licensed in content in a way that would put me in breach of my licence?

If you are licensing in certain materials to use as part of your training program, then, yes, you are right that you cannot state in your terms that you are the sole creator of all of the materials. You would need to amend this so that it says “we are the sole creator?or licensee?of all of the materials used as part of the training” or words to that effect.

Then you would go on to say “nothing in this agreement shall operate to transfer the ownership of the intellectual property rights in any of the materials provided as part of the training to you. You are licensed to use the materials for the purposes for which the training is provided only and you may not in any circumstances use any or all of such materials to compete with us or the licensor of any of the materials or to disclose to any third party any of the materials for any reason other than that for which the training is provided.”

You would also be wise to review the terms of the license from the third-party and add any additional restrictions into your agreement with your clients.

And that's it for this week's newsletter!

We hope you found these insights from our Savvy Shay Business Club surgery helpful. And remember, these are just a small sample of what we have to offer.

By the way, if you're looking for a commercially savvy legal expert who can help your business thrive, consider joining Suzanne Dibble's Savvy Shay Business Club. You can try it out for just ￡1 for your first month,?apply here! Don't miss this opportunity to get the legal support you need to grow your business.

Suzanne Dibble