
Ask HN: Someone trademarked the name of my product – should I be worried? - stanislavb
Hey fellow makers, I have the following case: I&#x27;ve been running SaaSHub (https:&#x2F;&#x2F;www.saashub.com) since 2014; however, I just noticed that someone had trademarked the term &quot;SaaS Hub&quot;. Should I be worried?<p>I read (on the Internet :)) that if I have been using a top-level domain before a trademark had been filled, they shouldn&#x27;t be able to claim the domain name. It would be nice if someone with similar experience or just knowledge in this field sheds some light.<p>Thanks!
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duxup
If you don't want to change the name / worried about that, you should talk to
a lawyer.

Either way without a lawyer whatever you read on the internet won't
necessarily be true if the trademark holder chooses to take action themselves.
You can't count on the legal system to make the right choice outright as the
the trademark holder may claim a great deal more than what we're thinking
here. In short your situation may not be 1:1 with what you read, even if what
you read was true.

~~~
giantg2
Along these lines, it might just be easier for you to change your site's name
and trademark it this time (should have done it the first time). That's
probably cheaper than hiring a lawyer or waiting for the other party to sue
you.

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stanislavb
As you can guess, changing the name of an established product would the be a
means of last resort.

~~~
giantg2
Depends on the number of customers and sunk cost of marketing. I have an LLC
and I would rather change the name than hire an expensive lawyer, especially
if the outcome is not certain.

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hstreet
I wouldn't get a lawyer until/if they contact you, and if they do I wouldn't
reply until you talk to the lawyer.

I trademarked a name about 7 years ago, it was a long process, and here's a
few things that I learned (from a non-lawyer perspective):

1\. Like you, I had a reasonably generic name (SaaS and Hub are two
established English words, and they are both commonly used in software and IT
services). That was the motivation for trademarking, as the chances are high
that others will use similar names purely by chance as opposed to copying.

So I trademarked under a defensive strategy so others couldn't come for me,
rather than an offensive strategy of going after others. The point is, come up
with a reasonably original name (like Google) that isn't a an English word or
a mash of English words, and you probably won't have to worry about
trademarking.

2\. To continue on from point 1, and let's say you create an original name,
like Covfefe. You're doing business with it, then 2 years later you find out
that someone else is trademarking it. The originality of the name should make
it a lot easier to be notified when someone enters the process of
trademarking. I think there's a 3-6 month process is which anyone else can
object to it being trademarked, and if you've been using it and the company
attempting to trademark it hasn't, then it will be thrown out.

In a challenge it comes down to who's been using it longer.

3\. Given that somebody has already trademarked the name, and you missed the
grace period to object, you could either wait for them to send a cease &
decease (maybe that'll never happen if they're defensive like me), or you
could change your name.

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stanislavb
Thanks mate. That was very helpful. In general, I can prove that I've used the
name commercially long before they've trademarked it and I own the ".com"
domain name. I hope I won't have to reach out to lawyers though.

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cblconfederate
Aren't the USPTO people supposed to do their research before allowing the
trademark? I have a similar situation, a 10+ year old game that someone
trademarked last year, even though a simple google search would show not only
mine, but also other more recent games using the name.

I think any legal action on behalf of the trademark holder would be dubious as
we could sue to invalidate their mark provided we are willing to pay the
lawyers.

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brudgers
If it matters, you'll need a lawyer. Good luck.

