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17 Comments

What to do if someone "steals" your name?

I started @tutorbook towards the end of 2018: https://tutorbook.app

Just recently, in December 2020, this guy, Ismatov, created a similar business and used the same name: https://tutorbook.io

My project has always been open-source and differs from Ismatov's in that my main audience are nonprofits and schools (who then share my app with students; it's a B2B2C model) while his audience are solely paid tutors.

What should I do now that he's "stolen" my name? Should I reach out to him directly? Or should I get a trademark and ask him to rename his project? What would you do if someone took your startup name?

  1. 4

    Too late, the name is in the open. If you cared about the name enough, you should have gotten trademark before. Focus on your project, so long as he's not tricking folks into thinking he's you. Out market/promote him and no will know him. Whomever wins the marketing wins the business.

    1. 4

      This is not correct. Reach out to a trademark lawyer, they will be able to help but it won't be cheap (low $thousands) and it could take a while (possibly more than a year).

      1. 1

        Second this. The question is also what you want to happen.

        I don't think it's a bad idea to reach out to them, point out the potential for customer confusion, and make it clear that you'd rather not get a lawyer involved if they're willing to change the name and move on.

        You can't force them without the trademark, but I've both given this warning, and been given this warning. It's not unusual.

        If you have records that show you using the name before they did, and you put in a trademark application for the scope of services that your trademark covers showing those dates were before the other one, and they haven't been granted a trademark yet, you aren't too late.

        The flip side of this conversation is that once you have a trademark, you're also obligated to defend that trademark. Which can cost money beyond establishing the trademark.

        Def talk to those IP lawyers and get a lay of the land. Get multiple opinions if you can!

    2. 2

      Yup, this is what I thought too. I'm still gonna reach out to some IP lawyers and get a professional opinion. But yeah, out-marketing is the plan!

  2. 3

    One thing both of you missed is that facebook has sued businesses in past that used "book" in their name and actually won. One of them was Teachbook which is very similar to Tutorbook. So no matter which one of you wins, facebook can actually sue both of you

    Last para on
    https://www.dictionary.com/e/facebooktrademark/

    1. 1

      I had been considering using this as an opportunity to just change my brand name; it's something I've been thinking about for a while now (e.g. to get a .COM).

      You know, this might just be the extra kicker to make me do it! Thanks for the pointer @linkish_io... I hadn't heard of that before.

      1. 1

        Sounds good. I just found out it this week only when someone referenced the link in some other discussion. There is a billion dollar company (bigbasket) which is trying to ask a 2 person company (dailybakset) to cease and desist because of the use of the word "basket"

        https://www.indiehackers.com/post/bigbasket-a-billion-startup-threatens-a-2-person-startup-to-shut-down-this-is-their-response-that-got-media-attention-9292f02f4e

        1. 1

          Yeah, famous, "strong", or well-known marks enjoy special protection from Courts in most countries but ESPECIALLY so in the US.

          And it often doesn't even matter if the famous brand or company has even registered their trademark, they can still be awarded protection just because of being famous or "large" from an overall revenue standpoint.

          No, it's really not fair. It's actually kind of ridiculous sometimes. (But sometimes it's just confusing )

          But it is pretty common and has a long history.

          See also:
          -3M vs 3N
          -Starbucks v Sambucks
          -Segway vs Swagway
          -Apple Corp vs Apple Computers
          -Instagram vs LitterGram

  3. 2

    Happens more frequently than you might think, especially across country lines. Won't hurt to have some intro discussion with lawyers, but ultimately you'll find that going the legal route will consume time & money you could be spending elsewhere to grow your business.

  4. 2

    My Shopify app is called SEO Product Optimizer. A French developer made a similar app called SEO Products Optimizer.

    His strategy is to get more reviews on the shopify app store so his app looks like the original one. Basically, there is no way to stop him. It's legal

    I was angry at first. After that, I refocus on my app again. The MRR is still slowly growing. And It doesn't affect me at all since I have my own vision that he doesn't have.

    I am planning to add some features later.

    1. 2

      Dang, I'm sorry man; your story seems even worse than mine! But yeah, I guess just focusing on being better is always a good solution.

  5. 1

    register all teh domains!!!!!!!!!111 /sarcasm

  6. 1

    Trademark is about the only thing you can do that has merit.

    1. -1

      This comment has been voted down. Click to show.

      1. 1

        Not true, happens all the time. Since neither of you has a trademark, a court would decide. You need to be able to prove you were in the market before they were and actually using the name. You'll need to provide proof of when you first registered the name, first put something out in public about the product, when you first offered a product with this name for sale, when you collected your first payment, and so forth.

        It can be done. Talk to a trademark lawyer (if you want to go that route).

        It's often easier to first try and work something out with the other party.

        Lawyers beget more lawyers.

        Money spent on a trademark lawyer may get you a trademark, sure, but it may also get you a note from their lawyer contesting your trademark. Which sends you back to your lawyers to fight it. Then on and on with more lawyers, more money spent. The only people certain to benefit here are the lawyers.

        So try the peaceful route first.

        P.S. File for your trademark ASAP. That will always work in your favor.

        1. -1

          This comment has been voted down. Click to show.

          1. 1

            Talk to your lawyer.

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