Hacker News Board Hacker News, browsed like a classic message board
Live data from Hacker News

Ask HN: Is a SaaS provider expected to have a trademark in every country?

news.ycombinator.com

Post reply on HN
Print view View original

21–30 of 32 posts

Re: Ask HN: Is a SaaS provider expected to have a trademark in every country?

#21

Post by [deleted] »

drchiu wrote: post #16
stanislavb wrote: post #6

OK, so if someone trademarks "TransistorFM" in the US, they could sue the podcasting service https://transistor.fm/ for selling to people in the US?

You should consult with a trademark lawyer (I'm not a lawyer), but my understanding from lawyers who've trademarked for me is that you must have used (or will use via the intention to use filing) the mark in commerce. If you have not, then the mark is not active. Because Transistor fm has used their mark in commerce, then they will hold rights to it already even if they have not officially trademarked (not sure if th…

[deleted]

Re: Ask HN: Is a SaaS provider expected to have a trademark in every country?

#22

Post by vmception »

Defending a trademark is a waste of time.

Using them as a deterrent is a nice to have, in your key markets.

But if someone challenged that by using a similar name or casually turning your trademark into a verb, it becomes a war of attrition that you win by never playing.

Re: Ask HN: Is a SaaS provider expected to have a trademark in every country?

#23

Post by jwr »

nairboon wrote: post #4

Yes you're expected to register a trademark in each country where you're conducting business. You can calculate the costs of registering a world wide trademark here [0]. It gets a bit expensive, but if you just cover your primary markets US/EU it's not that big of an expense. [0]: https://www.wipo.int/madrid/feescalculator/

The problem is that registering in the US and EU does not protect you against someone in (let's say) India starting a clone of your business.

With the global nature of most SaaS businesses, trademarks have become an unwieldy (and very expensive) tool.

Re: Ask HN: Is a SaaS provider expected to have a trademark in every country?

#24

Post by kube-system »

nairboon wrote: post #4

Yes you're expected to register a trademark in each country where you're conducting business. You can calculate the costs of registering a world wide trademark here [0]. It gets a bit expensive, but if you just cover your primary markets US/EU it's not that big of an expense. [0]: https://www.wipo.int/madrid/feescalculator/

> Yes you're expected to register a trademark in each country where you're conducting business.

Generally speaking, you don't need to register a trademark to do business. Many (most?) businesses don't register their trade marks. Walk down to your local main street and likely many of the shops there are operating under marks that are unregistered.

Trademarks are useful to have an official record of your use of that mark in the case of a dispute with another company at a later point in time.

Re: Ask HN: Is a SaaS provider expected to have a trademark in every country?

#25

Post by [deleted] »

kube-system wrote: post #24
nairboon wrote: post #4

Yes you're expected to register a trademark in each country where you're conducting business. You can calculate the costs of registering a world wide trademark here [0]. It gets a bit expensive, but if you just cover your primary markets US/EU it's not that big of an expense. [0]: https://www.wipo.int/madrid/feescalculator/

> Yes you're expected to register a trademark in each country where you're conducting business. Generally speaking, you don't need to register a trademark to do business. Many (most?) businesses don't register their trade marks. Walk down to your local main street and likely many of the shops there are operating under marks that are unregistered. Trademarks are useful to have an official record of your use of that ma…

[deleted]

Re: Ask HN: Is a SaaS provider expected to have a trademark in every country?

#26

Post by gingerlime »

As far as I recall, we registered our trademark in the US and EU, and it wasn't super expensive. That said, we waited a few years until we did it, when it started to feel a bit more important / the cost more negligible.

So far, the only tangible benefit of having the trademark was that we were able to claim a dormant Twitter account with our name. But I can imagine it can help in the longer run as well...

Re: Ask HN: Is a SaaS provider expected to have a trademark in every country?

#27

Post by Wronnay »

I think you shouldn't bother too much about that.

Names can be changed - the solutions you offer are more important.

And as SaaS provider it would be stupid from competitors to use the same name because you probably already own e.g. the domain => so it would be more hassle for them (except for the countries where fakes are common, but no trademark protects you in these regions)

Re: Ask HN: Is a SaaS provider expected to have a trademark in every country?

#28

Post by lmarshshalltm »

Hi- I am a trademark lawyer and work with many SaaS companies. I will tell you, it is virtually impossible for even the biggest companies to have a trademark in every country. It is a time intensive and very costly process to expand your trademark "globally." We can rely on the Madrid Protocol to extend a US trademark to many other countries but every country is a separate cost and the trademark is reviewed according to the laws of each individual country. Our clients expand on an as needed basis. We look at the countries where a client has the most business and apply in those countries. Then little by little we may expand out to other countries. Be careful working with large law firms- they sometimes will scare a client into more protection then the need. But of course there is always a risk/benefit consideration. Yes, it could happen that another entity comes along with a similar mark for a similar business in a different country. But most companies do not have a billion dollar budget for trademarks. Feel free to email me with other questions. laurie@tmthespot.com tmthespot.com

Re: Ask HN: Is a SaaS provider expected to have a trademark in every country?

#29

Post by sushshshsh »

jacquesm wrote: post #5
stanislavb wrote: post #3

Earlier quoted context omitted.

Doesn't that cost $30,000+ per trademark class. And many trademarks span into 2-3 classes... which bumps the cost up to $50-100k :/

Cheaper than a lawsuit.

This is why I would never want to be a businessman, much easier to just let the big dogs handle it while I focus on the code.

Re: Ask HN: Is a SaaS provider expected to have a trademark in every country?

#30

Post by nl »

mattbee wrote: post #17
nl wrote: post #11

Earlier quoted context omitted.

There is no need to hold a trademark to do business. If you start doing business is a country using a name it (usually - depending on local laws) provides some protection against others registering that trademark in that name (as a non-registered trademark). You need documentary evidence you were using it in that country before the trademark was attempted. You can then spend the money to register a trademark at some…

There's no need but if someone straight-up registers your name before you do, you will have an expensive fight compared to the cost of registration. Happened to my last company, the new company didn't want to budge and it must have cost £20k to rectify compared to the few hundred it would have cost if we'd registered it ourselves when we started trading 10 years earlier. Proving we'd got unregistered rights to the ma…

This is true(ish)..

> Happened to my last company, the new company didn't want to budge and it must have cost £20k to rectify compared to the few hundred it would have cost if we'd registered it ourselves when we started trading 10 years earlier.

£20k might be cheap compared to the fees associated with keeping a TM registered in multiple categories in multiple countries for 10 years.

It's pretty easy to spend $5K registering a TM in two countries across the number of categories you'd expect most SAAS companies to register in, and generally I think that gives 5 years of protection.

Post reply on HN