I’m adding notes of the chat I just had with the IP expert.
It’s a long read so grab a Club Matte, sit back and enjoy…
Key points for a successful application
1. Demonstrate prior use of the term
2. Demonstrate that the term is distinctive for the goods and services provided and directly connected to HSF
3. Term uniqueness should not be diluted by existing trademarks
Here are more details about each point:
1. Demonstrate prior use of the term
HSF will have to show that they have been using the term before anyone else.
What does constitute proof? (really depends on the view of the trademark application examiner)
- Letter or document from HSF that mentions the first instance of the term with date and location
- Announcement of public events
- Domain name history
- Hackspace Email account with discussions
- Physical proof: ads, poster etc.
- Mailing list (let’s check how old is https://groups.google.com/forum/#!forum/uk-hackspaces)
- Any other publicly available document that would be an indication to the public at large that the term belongs to HSF
- Note: A wikipedia page doesn’t constitute proof
Obviously an application can only include a short selection of these documents (or links) and a rationale detailing it. This would have to be written by a lawyer to maximise chances.
The process will be easier if HSF can demonstrate continuous use, not just the creation of the term. To that effect a timeline could be created in the application showing the evolution of the activity (maybe also adding a capture of the wayback machine could help).
One challenge though: When you do a google search a lot of the term activity overlaps with London Hackspace so there could be a need to show that all or part of it falls within the activity of HSF.
2. Demonstrate that the term is distinctive for the goods and services provided and directly connected to HSF
While I’m fairly confident that HSF could demonstrate easily it has prior use of the term, it gets trickers on the question of distinctiveness and direct link to HSF.
First a reminder:
"Trade marks are acceptable if they are distinctive for the goods and services provided. In other words they can be recognised as signs that differentiates your goods or service as different from someone else’s.”
“Hackspace" is not the easiest term to define or identify (see the HSF thread on the definition of “Hackspaces” for reference). The good news is that made up words like “hackspace" are usually acceptable as trademark because they are clearly distinct from any other existing names and brands. So we could demonstrate distinctiveness with this unusual name but we would still need to link it with our activity.
The goods and services are split into classes so a key question is which class or classes we would want to apply a TM for.
Guidance on classes can be found here: https://www.gov.uk/guidance/how-to-classify-trade-marks
Looking at the list: the classes 7, 9, 37, 41, 42 are relevant and we could apply for all or more likely some of them. Problem: None of the classes are clearly mentioning venues, workshops, clubs etc and what we would call our usual activity. We shouldn’t underestimate how crucial this choice will be and this is where we need further guidance from a trademark lawyer.
3. Term uniqueness should not be diluted by existing trademarks
Assuming that we answered all the questions above we would need to take the tricky decision on what to do with the 2 existing
trademarks that include the word “hackspace”. Because their existence lessen the uniqueness of our claim on “Hackspace”.
They are several ways to do this (Guidance on revocation is here: https://www.gov.uk/government/publications/trade-marks-revocation). We could either state prior use of the term or that it is now too generic. Let’s keep in mind that there are costs attached to this process, it takes time and won’t be ideal for our relationships with those TM owners.
A final note: Getting a registered trademark is not the end of the road as it also mean fighting off eventual opposition/revocation, monitoring other applications, renewal fees, keep active use of the term…
A summary of our main options:
- Apply for a TM of “Hackspace"
- Apply for a TM of “Hackspace" AND for the revocation of existing TM mentioning the term “Hackspace” (arguing prior use of the term)
- Apply for a TM of “UK Hackpace Foundation” (easier to do, does not protect “Hackspace” but helps make the term more generic)
- On the basis of genericity of the term: apply for revocation of current TM mentioning the term, and oppose any future TM applications
- On the basis of genericity of the term: oppose future TM applications
- On the basis of prior use of the term: apply for revocation of existing TM mentioning the term
- Do nothing
Suggested next steps:
- Get further support (e.g from free appointment with IP surgery and/or pro bono trademark lawyer)
- Discussion on which option is preferred
- Get an estimate of costs for the process of TM and revocation
- Explore funding solutions