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Trademark Issue - Existing Domain

mjreine

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Hello DNForum gurus,

I have a situation i could use some help with please. I have owned a domain for 10+ years and have a site / basic site on there that i've been saving my pennies to redo soon. Want to finally launch a business of my own. I've had designers make logos, other stuff under the domain and my emails for years.

Now that ive gotten the $ together to launch it, i went to the USPTO and see some joker registered my domain name in my category of online ecommerce without the .com or my logo. I.e. they copyrighted NIKE instead of NIKE.com

As of today, the trademark remains Live/Pending, with a recent status, NOTICE OF ALLOWANCE - ISSUED.
This mark is reaching Statement of Use (SOU) filing deadline (12 April 2026)

ive been using it with my website which is LIVE. it hasnt garnered many users because quite frankly its my development project and im learning and finally got the right tech stack i believe to make it work. How can i fight this guy apparently whoever filed it didnt care about my domain or its use in the same category and or is planning on sending me a C/D letter or trying to hijak it.

Who has legal help to please guide me in these dangerous waters? I was there first and have been using it openly for business for years online as archive.org will attest.

Thank you!
 

cactusfly

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I won't care about trademarks, and worry myself over some "TM squatter". Reminds me a patent squatter, royalty for music (copyrights in YT). I won't give advice on strategy, but everything is just a mere effort to gain controlling interest, aint? Lot of effort is merely wasted in legal, when you every option open. Domain is yours. Why do you worry? Just work on your idea, & push to production : )
 
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mjreine

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I worry because i was just told this...
as a Notice of Allowance means the opposition window already closed. Oppositions must be filed within 30 days after the mark is published for opposition. (im about a month or so over this date as i didnt notice it) Once NOA issues, an opposition is no longer available.
The remaining challenge options are:
a. File a Letter of Protest (not available now because it must be filed before publication).
b. File a Petition to Cancel (only after the registration issues).
c. Assert prior use rights through negotiation, coexistence, or litigation. Since they have not filed their Statement of Use yet, you must wait until the mark registers (if it ever does) to file a cancellation based on prior common law use.

seems option a is bad because they will just deny it most likely. b ill have to wait to see if the registration gets issued so i can petition to cancel it. c maybe but i dont have legal expertise and they are banking on this. Ugh. Have no idea how long the window for their statement of use is.

And @cactusfly how can i keep pouring money into my project with this going on. Why do i worry? I worry because i dont want to make marketing materials, website $ investment, hosting when someone is squatting my companies name as a trademark they beat me to filing but ive been using the domain for many years. How exactly would pushing it to production protect me? Would it give me more legal rights for senior usage rights? Have you ever fought something legally like this and won?

Thanks
 

cactusfly

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This is from my work experience as fighting a case against a corporation. I worked on a UDRP dispute for an associate, few weeks with a lawyer against a multinational corporation called OYO, who were bitching about trademark rights over the use of the word OYO. The domain name was OYO/LIFE in COM. And, specifically they made life miserable for him, suing him, exposing his portfolio of domains, and calling him a squatter. Do you think they played fair? If someone is that desperate, they will claim anything to prove a point. Rule #1: If someone sues you, don't react. Let them grow old sending you notices. I don't have to educate you on strategy. But, when it comes to legal, when you didn't commit a crime, why are you fearing as if the whole world is against you? Grow up! Don't worry, and be happy. Let the squatters keep calling you for a fight. You can always choose to not react!
 
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mjreine

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Im just scared as i cant afford big lawyers, wanted to start my own small business with the domain ive been doing web dev on practicing for getting it right for years. And now potentially what they could have the name locked down so i cant do any ecommerce with it for years? It just made my whole life plans sour if they will persist on this.
 

HelmutsHelmuts is verified member.

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Im just scared as i cant afford big lawyers, wanted to start my own small business with the domain ive been doing web dev on practicing for getting it right for years. And now potentially what they could have the name locked down so i cant do any ecommerce with it for years? It just made my whole life plans sour if they will persist on this.

huhh.. I feel your pain :/ .. let me PM a domain and IP lawyer Igor Motsnyi (Serbia) - he is super well known in Europe and Asia (recently helped me gathering amazing legal panel for the Domain Summit Asia). .. I have heard that sometimes he provides super affordable services for domain investors who don't have budgets for protecting themselves.

.. if you need his direct contact information - just DM me.
 

clasione

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If your domain name’s registration date predates the filing and first use of their trademark, you’re generally in a strong position. Under the UDRP, the complainant must satisfy all three elements of the test - including proving that the domain was registered in bad faith. If your registration came before their trademark existed or before it was first used in commerce, they typically cannot meet that requirement.

That said, every situation has unique nuances. Trademark timelines, marketplace behavior, and how the domain has been used can all influence risk. For complete peace of mind, it’s best to speak with an attorney experienced in domain and trademark disputes.
 

cactusfly

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I will not advise you to connect, or contact the other party now.

I agree you have a tough time dealing with these TM

PADDLE.COM - A TM almost bankrupted the startup...

In 2012, my co-founder Harrison Rose and I founded Paddle with a vision: to simplify payments for software companies. I was 18 years old. Harrison was 22. We had raised $200,000 from angel investors who believed in us despite our age.And we were about to make the biggest—and riskiest—purchase of my life.

The $120K Domain Decision​

From day one, we knew we wanted a clean, brandable, one-word .com domain. We started searching and found Paddle.com available for sale through a broker.

After a few weeks of back-and-forth negotiation, we agreed on a price: $120,000.

Let that sink in. We had raised $200,000 total. We were about to spend more than half of it on a domain name.

But we felt so strongly that a solid .com and brand name were essential to building a serious company. We spoke to our investors and convinced them to extend our round to $320,000—specifically to buy the domain while maintaining the same runway.

We did all the usual due diligence. Trademark checks with our lawyer. Everything came back clear. We closed the $120,000 purchase.

The FedEx Package​

A few weeks later, we put up a holding page on Paddle.com and announced to the world what we were building. We were working out of a small corner in one of our investors' offices, excited to be a real company.

The following week, the office manager came up to us with a FedEx package.

"Your first mail!" we thought. "We're legit now!"

We opened it. Inside was a cease and desist letter and an intention to sue for trademark infringement.

The Nightmare Scenario​

What? We'd checked! Our lawyer had done comprehensive searches just days before completing the purchase. Everything came back clear. No conflicts. No issues.

Here's what happened: someone had registered the trademark for "Paddle" just a few days earlier—literally days before our lawyer ran the searches. At the time, there was a 5-7 day lag between when trademarks were filed and when they appeared in the online databases lawyers used for searches.

We had checked during that gap. Our timing was impossibly unlucky.

The other company was another seed-stage startup using derivatives of the name: "usepaddle.com" and similar domains. They were building something completely different from us, but they'd filed for the trademark first. By days.

The letter was clear: they owned the trademark. We owned the domain. And those two facts were legally incompatible.

We'd just spent $120,000 on a domain we might not be able to use. And there was nothing we could have done differently to prevent it.

The Impossible Choice​

We were stuck. The $120,000 we'd paid was too much money to just walk away from. But it was also more money than the other company had—or was willing to spend—to buy the domain from us.

We couldn't sell it to them. They couldn't outbid us. But they owned the trademark.

In an eerily similar situation to another founder's story, we realized we needed to pay "the other Paddle" to change their name. It was the only way out.

The $155K Buyout​

After weeks of going back and forth between lawyers, we reached an agreement:

£120,000 (about $155,000) for them to change their name and assign all the trademarks they'd registered to us.

We did it. Using the remaining $200,000 we had in the bank, we paid them and acquired the trademarks.

That left us with $45,000 to run the entire company.

Operating on Fumes​

$45,000. That was our runway. For an entire SaaS company.

Let me put that in perspective:

  • We had a team of four people to pay
  • We needed servers and infrastructure
  • We had office costs (even just a corner of an investor's space)
  • We needed to actually build and launch the product
$45,000 gave us maybe two to three months. That's it. Two to three months to build a payments platform from scratch, get customers, and generate enough revenue to extend our runway.

Most startups spend $45,000 on a good engineer for a month. We had $45,000 to build an entire company.

It was terrifying. Walking into that investor's office every day, knowing we'd gambled everything—$275,000—on a domain and trademark battle. Knowing that if we failed, we'd have nothing to show for it except a very expensive domain name we couldn't use.

But it was also the biggest motivator we'd ever had. Failure wasn't an option—we'd already spent everything. The only way out was forward.

So that's exactly what we did. We launched. We got our first customers. We extended our runway with revenue. Every sale felt like oxygen. A few months later, we raised a seed extension that gave us breathing room.

But those first few months? We were running on pure adrenaline and desperation.

The Billion-Dollar Outcome​

And the rest is history.

Paddle went on to become a payments infrastructure platform serving thousands of software companies worldwide. We built a company worth over $1 billion.

Was spending $275,000 on a domain and trademark issues a smart decision for a startup with $200K in the bank? Absolutely not.

Was I young, lucky, and a little stupid? Yes.

Did it work? Somehow, yes.

When you're all in, when you've bet everything on your company's name and identity, you find a way to make it work. That desperation, that do-or-die mentality, became our biggest motivator. We'd risked everything for Paddle.com, so we were going to make it count.

And in the end, that $275,000 investment helped us build something worth a thousand times more.



TL;DR: An enterprising company, TM'ed the name, while the original owners owned PADDLE.COM.

My take ---> Don't over react to anyone sending you legal paper work.

Look beyond, its a big world ; )
 
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