Trademark Issue - Existing Domain

[mjreine]

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]

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 : )

 

[mjreine]

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]

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!

 

[mjreine]

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.]

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.

 

[nicenicnicenic is verified member.]

Hi, mjreine

Your best move is documenting continuous use because prior use often outweighs a pending trademark.

 

[HelmutsHelmuts is verified member.]

@IgorMocni has joined the DNForum - highly recommended!

 

[clasione]

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.