Ask HN: Someone registered trademark for the name of my product | Hacker News Reader

Ask HN: Someone registered trademark for the name of my product

5 pointsroadbeats3 comments

Hi there,

Last month I released a new web product. Let's call it "Foobar" (the original name is something else). My product already has users, it has an ad video, it'll soon be in app store, too. The domain name "foobar.com" is taken by a Canadian company though. It's parked, and has a form of "submit offer if you want to buy it". I thought the domain name was for sale. My product is on another domain name, something like "getfoobar.com".

Today I just realized, that Canadian company who owns the domain name already registered the trademark in Canada without the product released, and also pending trademark application in US. So the name of my product is registered under another company. By the way, we're talking about a shady loan company, not a software company.

What should I do in this case ? I don't want to change the name of product because my product is already released and

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Get some advice from an IP lawyer. You may want to read this first:

https://en.wikipedia.org/wiki/Trademark

From my understanding (as a non-lawyer), trademarks in the US are domain-specific, so someone having a trademark for a Foobar loan company might not prevent you from getting a trademark for software called Foobar, assuming your software has nothing to do with loans or finance and there would be no confusion between the two products.

A lawyer could tell you if you should try to register a trademark for your product under the Foobar name.

They registered the domain name for a HR software. They are a loan company though.

Apparently they also have HR product offerings/software or are going to be going in that direction.

Is your product an HR product? If it is and they obtain the trademark registration of that product name for their HR product, they will have every right to prohibit your use in order to avoid unnecessary confusion. If it is only in the application process you can submit information to the USPTO showing that you have been using that name prior to them (the key here is proven prior use). That does not necessarily mean you will be able to prohibit their registration but if you can show prior use of the same name then the USPTO may allow you to continue to use that name, but that is not likely a wise course of action on a new product you hope to grow. You would subject your project to confusion and it does not sound like this is the type of business you would want your customers to think you are affiliated with or worse, you and that company are one in the same.

It would be wise to talk to an aiP attorney but you can do a great deal of online research regarding these types of conflicts. Unfortunately your situation is not that uncommon and the end result will probably be that you will need to change your name if you also have a HR software or a software product.

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