It is every brand’s worst nightmare and it came true for Clubhouse.io, makers of project management software, in 2021.
The Clubhouse audio networking app launched with much fanfare and rapidly reached a US$4 billion valuation. While the app has growing pains of its own (numbers are falling steeply), there is no doubt that in a short period of time, it has become a well-recognised name and much-talked about brand amongst both its target audience and media.
A direct result of this quick rise to fame is the impact on search results. Even though Clubhouse.io is a much older product – it was launched in 2016 by Eric Schrader and Andrew Childs – the search results are unsurprisingly dominated by the audio app.
Schrader announced in this blog post that come September, Clubhouse.io will be called Shortcut and admitted that his decision was forced by the name overlap with the audio app.
What is not clear is if there are legal reasons that forced this change. Trademark experts will tell you that names must be registered – and can be defended – in relevant product classes. You can have both Delta Airline and Delta Faucet co-existing, but no one else can register the name Delta in either of these product classes. Registering apps under US Trademark Law is more complicated, because there are close to 80 goods and service IDs, which can be relevant.
If Clubhouse.io had trademarked their name, then they could have potentially raised an objection when Clubhouse, the audio app, tried to register. Or maybe, as Schrader says “The Clubhouse Audio App became so big so fast that we couldn’t possibly hope to forever maintain our own brand standing in the face of their popularity.”
Either way, the lesson here is to make sure you have done everything you can to legally protect your brand. The rest is up to God and Google.