How do I secure my SaaS startup?

I want to name my SaaS startup X, but X is already used by a Joomla theme. Can still I go with it?

• I want to name my Software (SaaS) startup X, but X is already used by a Joomla theme (so it’s also Software but not a service similar to ours). X was registered as TM by a company Y about 2 month ago. Y has no product called X yet (and they do not own http://X.com.com). BTW: The domain http://X.com is for sale. The Joomla theme called X is already in "commercial use" (they are already selling). I understand that first-to-use comes before first-to-file. So the theme vendors have first-to-use rights to trademark X for their "category" but not for SaaS-Software? Company Y has the TM but when I start my own SaaS product called X (and buy http://X.com) then I would have first-to-use rights and claim the trademark in a couple of month?   Can I just start to use X for SaaS and gain traction and then my first-to-use rights will win over the current TM for X in the SaaS category? I don't want to come into a position where the theme vendors can use their first-use rights to claim the TM over the SaaS category and make my TM rights worthless.

• Answer:

  You are asking two or three questions here. First of all, if you apply for a trademark under this name, will it get approved? Apparently not, since they filed (if I read your details correctly) an intent to use filing on this trademark already. It is likely that your SaaS and their software theme are in the same Class, thus you can't have the same trademark. Second, if I put out my SaaS under a domain with the name of their trademark, will I get sued and/or will they contest me for the domain name? My answer is probably, but that totally depends on them. I have no idea what there litigation history is because you are not giving specific details. (Nor can you, since specific legal advice can only be given by lawyers in the U.S.) Third, if they do sue, will I win? This is usually not a good question to ask. Being sued is the part you want to avoid because the process is costly. You need to talk with a trademark attorney. Not only can they file a trademark for your SaaS, they will do all the searches needed to make sure that your risk of being sued by someone is very low. If you name does conflict with an existing name, they will advise you on renaming or modifying the name sufficiently to get a registered trademark. And you will have someone ready at hand if you do get sued.