Trademark of previously registered domain

[warnerms]

It has recently been brought to our attention that an LLC in Nevada applied for a US Trademark on a domain name that we had registered prior to their Trademark application. A search of uspto.gov shows the "Filing Date" to be October 29, 2006 and
the "Published for Opposition" date is June 5, 2007.
The date we registered the domain name was March 16, 2006, and it is currently parked
pending future development.
What are the respective rights of each party in this matter?
What is the actual process/(filing fees) to oppose a Trademark application?

 

[DNQuest.com]

http://www.uspto.gov/web/offices/ac/qs/ope/fee2007february01.htm#tm

Are they trademarking the name with or without the extension?

Also, do they state first use on their application? Or is it for future use? This would take precedence over the filing date since most TMs applications are filed after a TM is establish through common law.

Depending on the answers would depend on the opinions that are given.

 

[Brett Lewis]

It also depends whether you would plan to use your domain name in the same field as the trademark holder. I have had several situations where clients registered domain names first, but did not use them, and third parties subsequently registered identical trademarks, less the .com, and hemmed them in so that ANY use would be infringing.

 

[warnerms]

Well their Trademark seems to be in connection with female sportsware.
So how would they make ANY use infringing?

Yes the Trademark is without the extention. The company does not seem to have an actual business address in Nevada. The Officers list their address as a residential address in California.

 

[xserver]

trademark holder

 

[Brett Lewis]

Well their Trademark seems to be in connection with female sportsware. So how would they make ANY use infringing?

If your domain name, or some element of it, was descriptive of female sportswear. If it is a domain name that can be used to refer to other non-related goods or services, you may have rights to use the domain name in non-competitive fields. Your question cannot be answered properly, however, without knowing the specific facts surrounding your registration and use of the domain name and the third party company's registration and use of their trademark. I would recommend that you not post those specific facts publicly, but that if you are concerned, that you seek the advice of your attorney.

 

[Domagon]

Opposing their TM is likely *not* the right move unless you have a TM for the name too that is the same type of business as theirs.

Since you mention the domain is parked and is reserved for "development", you are unlikely to prevail ... if anything, potentially face more problems.

However, if you can document that, while the domain is parked, you have been actively "developing" your business around the name, you MAY have a chance ... at least it may be worth getting an attorney involved and proceeding with challenging, etc.

Again, though, you run a bigger risk of opening a can of worms than anything else ... the best thing to do may be nothing ... chances are they may never want your domain name or perhaps offer to buy it.

Filing UDRPs, lawsuits, etc is often not a slamdunk for companies in the type situation you describe ... often a company will prefer to simply buy the domain for a reasonable amount; less hassle for them than litigation that could drag out for ages.

Ron