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Someone Is About to Grab My Brand


#1

To monitor discussions around my Joomla/WordPress products, I have setup Google Alerts to inform me when my plugin names are mentioned.

A week ago I got a notification that really scared me. Someone had setup a new site, with my actual brand name being the domain, with a .co domain ending.

Background on my Products
I don’t want to reveal the brand name here given the situation, so I will use the word “Pool” instead of my brand to explain how things relate.
Over 5 years ago I have launched my Joomla plugin “Pool”, it was and still is hosted under a company-name domain (= so not under a “Pool” domain).
Given the time span and that my brand name is a little bit of a made-up word, the majority of the Google results of “Pool” will actual relate to the Joomla plugin.

A few months ago, I have launched “Pool” for WordPress and, as I have not found anyone using the name, called it “WP Pool”. So identical name as the Joomla plugin, but with the WP-prefix. This time I decided to host in under a dedicated domain and use wpPool.com for the WordPress plugin.

My Brand in Danger
Now back to last week: someone is filling a new website “pool.co” with life.
Concerning is that this relates to a WordPress plugin (with a SaaS backend) in the same space as my plugin, named “Pool”. It is not a competitor, as the use case is really different, but it is in the same niche (in our example: the “garden” niche).

There is already a lot of content on the site (e.g. documentation), however it is probably not launched yet as many things including sign-up and checkout are leading to errors.
Thanks to the documentation I can see that the product powering “Pool” has been around for at least 4 years, however under a different name. So that old product seems to be re-named to my product’s name. Great!

What now?
What stresses me is that I seem to get a search term competitor in regards to the brand name “Pool” and related searches (“Pool WordPress”, “Pool garden niche”).
So my existing search rankings seems to be in danger. At worse is that my new “WP Pool” product being a WP-plugin like my competitor might be confused with the other one.

This incident makes me realize that I don’t own any “Pool”-only domains (like pool.com or pool.net), I only own “wpPool.com” and “getPool.com”.
And I don’t have registered any trademarks to protect me.

I am now struggling to decide how to take action in this situation.
The options I see are:

  1. Communicate Open
    As the rebranding of that other person’s plugin is not official, yet I am thinking about reaching out to the guy (I think I know who it is, it seems to be a European like myself, however from another country) to see if he even is aware of the name overlap.
    What holds me back from doing so is that:
  • this might be a sign of weakness (and the weakness is true given I don’t think I have legal options without the registered trademark)
  • the guy seems to earn about 2-5x of my revenue with his product (his product is public on Envato’s CodeCanyon site under the old name , so I can do an estimations of his earnings), so he probably has more money to spend on a lawsuit than I have
  1. Get a lawyer
    I could spend money on a lawyer for registering a EU-wide trademark and then sending the guy a cease and desist letter.
    What holds me back is:
  • that getting a EU-wide trademark costs me at least 1200 Euro + probably around 300 Euro for the cease and desist letter
  • that the outcome of the above might be a lawsuit which costs even more
  • see my point under 1. in regards to the guy potentially having more funds available
  1. Do Nothing
    Well, I could also ignore everything and try to make my peace with that.
    What holds me back is:
  • that I think this could have a large effect on the visibility of my products given that his product is way more known (under the old name) and thus probably will become more known under the name, as well
  • doing nothing is not my strength :wink:

Do you see other options or have experience with a similar situation?

Any advice welcome, thank you!


#2

From trade mark point of view, as it was explained to me some time ago, even if you launch a product named “Pool” in the same industry as another product named “Pool”, it is enough if you always, unconditionally, refer to your product as YourCompanyName Pool. Legally the owner of the current Pool product shouldn’t have a ground for attack, especially a small one with no deep pockets. IANAL.

That of course doesn’t help with SEO rankings.[quote=“holger, post:1, topic:4761”]
Communicate Open
[/quote]

I would take this road. Small folks should be able to come to an agreement.

You’re already in the confrontation mood. Be more practical - even if the guy refuses, you can always rebrand yours. You SEO rankings will be hurt one way or another.

That will only make two lawyers richer, and two smaller guys poorer.


#3

While I am not a lawyer either, I am sure brand name related law is complex - even if this is not cross-border / EU-law as in this situation. So I think is is probably not accurate to say that “simply” using a company prefix does allow you to use any brand.

Thank you for sharing your thoughts, you helped me to take a step back and reconsider. Needless to say, my motivation to rebrand after all of that years of using the name is limited.

I will see if the other person will even respond to my message and hopefully we can figure something out.


#4

A few quick thoughts:

  1. Are you certain that the competitor product is legitimately being setup under this new brand? Maybe someone is planning to rip them off too.
  2. Is you made-up name sufficiently domain-related that it is plausible that someone else can make up the same name with the same thinking you applied, completely independently? Maybe they didn’t do searches to see clashes.
  3. If it is really not a competitor, is there more benefit to either an alliance or acknowledging each other’s existence than to a fight?

#5

As I understand EU brand law, different businesses can have the same name, as long as there is no confusion for customers. So if you competitor does something different, but in the same domain, even with WP, it may be completely legal.
Brand and trademark law is quite subject to interpretation, and I would really, really hesitate to go into a cross border dispute.

I’d recommend to buy a pool. io/net/org/com … top level domain and use that also for your brand.
And reframe your story from “My Brand in Danger” to “We must do better with SEO”.


#6

To provide an update: in order to get into the discussion with the other product’s owner, I have reached out in various channels but have not yet heard back anything.
As both the old and the new site are WHOIS protected I only had the WHOIS info/email from the presumable company behind the product. Well and that email bounced back due to a full mailbox…
I have tried with another email and a contact form and hope that I get a response.
The other options I am left with is Twitter and sending physical mail to the company address I got.

@AndyDent
Thank you for your points.

  1. I am not a 100% certain that the other potential user of my brand is really doing a rebranding, as I have yet to hear back from the person running it.
    I strongly assume it though, given that there is an “how to migrate from [Old name] to [New name” article in the documentation and the buy page links to the CodeCanyon page of the old product.
  2. I can see that the made-up name does apply to the other person’s product as well given it is the same niche. Regarding seeing the clash I am not sure - I don’t think you’d miss it if you do a search at all.
  3. It is not a competitor and I don’t think there is a way to build an alliance as the customer set typically will not overlap. I don’t want to pick a fight currently.

@unboot
Thank you for your thoughts.
I am also hesitating to go down the legal road, and really hope that I can avoid the distraction of having to fight for overlapping key terms potential customers might search for. There is always room for improvement in SEO and I of course have the advantage of being around longer. Still I am afraid that the larger customer base of the other product may change that quick (with forum discussions and other natural SEO effects).