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[Boris Mordkovich]

Greetings,

My name is Boris Mordkovich and I'm the founder and owner of a New York-based Internet firm. We have a trademark problem that I would like to get some input in and perhaps find an experienced attorney to work with.

Last year, we have filed for a trademark to protect one of the products that we developed and launched. The trademark was for the product's name.

Last month, we have received a "Notice of Suspension" from the USPTO's office, which stated that there is another trademark similar to ours that already exists.

It was very strange to us because we research the name before we applied for the trademark and never even heard about the other company. After receiving the notice, we conducted further research and found out a few interesting bits of information:

- Their trademark was registered on 08.25.03. However, we originally registered our domain name on 07.27.03. Unfortunately, we spent a year developing the product, so we only started selling it in 2004.

Now, what kind of chances do we have of winning the dispute and keeping our name?

Also, is it worth it to contact the other company before we do anything and see if they'd be willing to agree to let our trademarks co-exist without going into a legal "battle"?

If they agree, would the USPTO permit both marks to be registered? If not, then what kind of an agreement could we setup with them?

Thank you for your time!

Boris

[Isaac]

Based solely on what you've posted here I would not expect your changes of successfully opposing the mark to be good.  Simply registering a domain name is not a trademark usage.  Also it is likely that the mark holder's date of first use is before your domain registration date even if his registration date is slightly after yours.  The first use in commerce date determines the priority.

There may be some possible facts and details that can improve your odds.  Maybe a consultation with a professional is in order.

I have heard of at least one case where a mark was registered over the PTO's initial objection after the senior mark holder agreed that the mark would not cause confusion.  Whether or not two marks are confusingly similar is a very fact specific question and I won't speculate on your situation except to say that the PTO believes the marks are confusingsly similar.