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[matriarchy]

I registered a .com domain in 2001, and have been using it for commerical purposes related to my primary business. It is not my primary incorporated business name.  I had a logo designed for the domain in 2004, and bought the .net and .org versions.  I discussed a business plan with others and did preliminary product development.

I decided to incorporate a subsidiary business using the doman name as a business name in my state (PA).  But in doing the research for that, I discovered that another company in NY has registered the name as a standard character mark for a software product.  They own the .biz domain, purchased in January of 2005.

Filing Date March 31, 2004
Published for Opposition August 23, 2005
Registration Date November 15, 2005

I was unaware of the application, so I did not oppose the registration, but  I did have the domain in active use, with a website and people using email addresses from the domain.   I can document that the domain was findable via common search engines for years prior to the trademark application.  I advertised web-based services in public forums using that domain name.


I am not sure what avenues to explore with an attorney.  I don't want to waste money on an attorney if my options are very limited.  

-- Does this affect my use for a business name like "Domain LLC" in PA?  

-- Can I still oppose the registration of the trademark?

-- Am I correct in believing that I am not likely to have the domain registration taken from me, because I registered and used it extensively before the other party applied for the trademark?

-- What other factors/issues should I be looking at?

[JSonnabend]

If you were using your mark in interstate commerce prior to the other party's first use, then you may be able to cancel the registration and/or stop them from using their mark and domain.  If not, then they may be able to do the same to you.

There are several facts which need to be developed in order to give you proper advice, and there are likely several valid approaches to dealing with your situation.

I'll give you the only two pieces of free advice that are actually worth more than you're paying for them:  1. Talk to an attorney (I handle these matters, as do others here); and 2. do it soon.

- Jeff