Classic TM quandary-Company has just filed for TM on my 5 year old domain-What to do?

[Focus]

If you want to claim rights to a trademark PRIOR TO REGISTERING IT you use the symbol ™ afterwards, once it's registered than you use the little R symbol with the circle around it like this ®

You can still develop and claim a common law trademark on something that you have used in interstate commerce previous to their filing for a Trademark, and you should oppose their registration of such if that will harm your domain and or goodwill/brand associated with said mark. If they go for a provisional 1b then it's an "intent to use" where as 1a is claiming it's in active use. If your first usage date preceeds what they claim and you plan to have exclusive rights, then you better get to filing for a real Trademark and not sitting around like a bump on a log!

 

[jdwaverly]

I'm not a lawyer, but I do own several Trademarks.

I see some confusion in this thread about what a Trademark is and what protection it offers.

1)A Trademark is NOT the right to the exclusive use of a business name.

If you search for any common word in the Trademark database you will find many companies who have registered the same name as a trademark. However, you will find that none of the companies are in the same industry or sell the same product.

Trademarks are to protect a company's brands from confusion with another company's products IN THE SAME INDUSTRY.

Therefore, if a company has the Trademark "OUTBACK" on their Restaurant business, they might have a Trademark infringement case on another company operating a restaurant called "Outbackers".
However, they would have NO CASE against a store selling outdoor clothing.

You cannot file a Trademark UNLESS you are currently operating a business USING that name as part of your business.


SO, you would have no basis to file an objection to the Trademark filing UNLESS
a)You are currently using the Trademarked name in an operating business
b)Your company is in the same industry as the Trademark filer
c)You can demonstrate that your brand's customers would be confused by the use of the name by the filer

A UDRP dispute is a completely different animal.