Ask HN: Competitor lifted app concept and name and filed trademark

10 points by ShinyCyril 8 years ago | 6 comments

We are based in UK and US - CA (not a registered company in either). Competitor looks to be based in CA also.

A friend and I have been building an app as a little side project for a few years. With work and real-life etc. it's been stuck in beta for quite some time, but we were actually hoping to launch this weekend.

Today we discover that a competitor launched with an identical concept. Fine, it's an obvious concept that I was surprised no-one had come up with already, and we lifted a large part of the UI from Tinder anyway. What I'm concerned about is that they also copied the name (changing one letter: Chowder (https://www.getchowder.com) -> Chowdr (https://www.chowdrapp.com)) and filed a trademark.

Is there prior art for trademarks in the US (we have been publicly visible as Chowder since ~February 2016, it seems their trademark was filed in March 2016)? I was able to find some info about the trademark (https://www.bizapedia.com/trademarks/chowdr-87042422.html) - of note is that they have a pseudo-mark for 'Chowder' as well.

While I'm annoyed that this person lifted the concept and the name, I am more worried that they will make a trademark infringement move on us as soon as we launch properly, which we cannot afford to defend against.

If it makes any difference, we have the option to become a registered company in the UK (where I am based), however we planned to launch in the US initially anyway, so I assume this would still classify as infringement?

Any advice would be appreciated. At this stage I'm thinking we should just rebrand.

brudgers 8 years ago |

My random advice from the internet is to pick a different name, change the product to show the new name and launch. It might even be possible to launch without changing the name and then start changing the name, but I am not advising that just mentioning it as an option.

Mostly, nobody cares about the name 'chowder' unless your app is a soup or stew. It's not worth delaying launch or lawyering up over at the scale of a side project.

Good luck.

siegel 8 years ago |

mindcrime is correct - you hdon't need to register a mark to have rights to that mark as a trademark in the US. You just have to use it in interstate commerce in connection with the goods/services at issue.

If you were using it in the right way prior to your competitor, you could have rights to block them. (If you haven't launched in the US, chances are you haven't used the mark in the right way.)

Right now, their application has been published for opposition. You could attempt to block the registration by filing an opposition before the Trademark Trial and Appeals Board. You could also sue them for trademark infringement in state or federal court or use your prior use to defend against a claim by them for trademark infringement.

All of this, of course, costs a lot of money. Is it worth it to you to spend a ton of money to protect this name? My guess is no.

Happy to answer additional questions (either on here or you can email me).

ParameterOne 8 years ago |

They did register under the international class 009 FYI, and Right to register and right to use are two different things. And usage may have been amended. Click on their prosecution history tab here: http://tsdr.uspto.gov/#caseNumber=87042422&caseType=SERIAL_N...

And in there statement of use it says: The mark was first used by the applicant, or the applicant's related company, licensee, or predecessor in interest at least as early as 08/22/2016, and first used in commerce at least as early as 08/22/2016, and is now in use in such commerce. The applicant is submitting one specimen for the class showing the mark as used in commerce on or in connection with any item in the class, consisting of a(n) specimen-a.jpg: Screenshot of "www.chowdr.us" website using mark specimen-b.jpg: Screenshot of Google Play Store using mark specimen-c.jpg: Screenshot of Apple App Store using mark.

So if you used it before august 22, 2016 you should fight it!

mindcrime 8 years ago |

Obligatory disclaimer: IANAL. Talk to a real lawyer.

That said, my understanding is that, in the US anyway, you gain a trademark simply by the act of using a "mark" in, well, trade. Even if you don't file for a registered trademark, you still have a trademark if you've been using the mark in trade. What I'm not sure about is exactly what counts as "in trade". If your product isn't launched yet, but you have a website up with a a landing page, does that count? I don't know. That's the part where you need to consult a real lawyer.

I'm also not sure if you have any specific recourse to block your competitor from obtaining a registered trademark which is confusingly similar to your own trademark. This is another place where you need real legal counsel.

At this stage I'm thinking we should just rebrand.

Why should you rebrand? Assuming you really were using the name first, you probably have grounds to stop these guys from using it. Go talk to a lawyer who specializes in "IP stuff". Hey, best case, maybe this will be one of those deals where just having a lawyer send a threatening sounding C&D letter to the other group will result in them backing down.

threecheese 8 years ago |

For what it's worth, 'Chowdr' was tweeting about their launch in 2015: https://twitter.com/chowdrApp/status/677252382124670977

ShinyCyril 8 years ago | |

Thanks for pointing this out - I couldn't figure out how to navigate Twitter to sort by date. If I was being paranoid I would have said that they picked up on an ad campaign we put out in 2015 to garner interest, however I suspect it is much more likely that the apps started around the same time and both happened to converge on the name Chowder (which is a fairly obvious choice for a food-app).

While I do think it's still fishy that they recently added some features which bare a great deal of resemblance to ours, that is a separate, unrelated issue.

As our app has been available for longer, I would hope that would be sufficient to at least protect ourselves in an infringement case - however rebranding might just be the most straight-forward option at this stage.