Originally Posted by jberryhill

Bullshit.

Domaingenius, your analysis is not only correct, but followed by the United States Patent and Trademark Office in their administration of the Lanham Act:

Word Mark CLUBDICE.COM

Goods and Services IC 035. US 100 101 102. G & S: Advertising and directory services, namely promoting the services of others engaged in providing online gambling services, by providing a directory of gambling service providers, placing advertisements in such directory, and providing such directory via a global computer network. FIRST USE: 20020619. FIRST USE IN COMMERCE: 20020619

Mark Drawing Code (1) TYPED DRAWING
Serial Number 76423350
Filing Date June 20, 2002
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition March 11, 2003
Registration Number 2721033
Registration Date June 3, 2003
Owner (REGISTRANT) Name Administration Inc. CORPORATION BR.VIRGIN ISLANDS Box 10518 A.P.O. Grand Cayman CAYMAN ISLANDS
Attorney of Record John B. Berryhill
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE


Word Mark QUICKFARES.COM

Goods and Services IC 035. US 100 101 102. G & S: Advertising and directory services, namely promoting the services of others engaged in providing food and beverages by providing a directory of food and beverage providers, placing advertisements in such directory, and providing such directory via a global computer network. FIRST USE: 20030700. FIRST USE IN COMMERCE: 20030700

Mark Drawing Code (1) TYPED DRAWING
Serial Number 76544407
Filing Date September 2, 2003
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition May 18, 2004
Registration Number 2871333
Registration Date August 10, 2004
Owner (REGISTRANT) Name Administration, Inc. CORPORATION CAYMAN ISLANDS Box #10518 A.P.O. Grand Cayman, GC 12345 CAYMAN ISLANDS
Attorney of Record John B. Berryhill, Ph.D., J.D.
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

Both domain names are used as marks for PPC directory services.

A trademark is any word, symbol, or device (as in insignia, heraldic device) used on or in connection with goods or services in commerce such that it provides a distinctive indicator of the origin or source of said goods or services.

Originally Posted by jberryhill

Reading your question more carefully, I gather:

1. You have domain name XYZ.com. You are using it to provide advertising services.

2. Someone has applied to register XYZ as a mark, and it has reached publication for opposition.

3. You want to oppose their application.

Of course there is a constellation of other specific facts, such as whether your domain name is used as a mark in relation to the advertising you are conducting. There are also questions of whether it makes sense in the context of what they are claiming as their goods or services.

However, an opposition need not be a Battle Royale to the death. Like most legal proceedings, most oppositions settle. An opposition proceeding can be an ideal context in which to secure a non-enforcement agreement, if your underlying concern is that they would otherwise use their trademark registration to come after your domain name.

The basic facts of the opposition I've linked above are:

Applicant is seeking registration of "@POS.COM" as a mark for certain services relating to Point-Of-Sale terminal software.

Opposer(s) own interests in the domain name POS.COM, which is being used as a PPC page to advertise Point-Of-Sale goods and services.

Now, I have no idea why some marketing genius thinks it was a good idea to intend to use "@POS.COM" as a trademark when they don't even own the domain name POS.COM.

But the domain registrants are not going to wait around to find out, so they indeed are opposing registration of the mark, as likely to cause confusion or mistake relative to the source of goods and services which are being provided by means of their domain name.

Now, of course, POS can stand for any number of things, but I don't want to be scolded by Eric again for being naughty.