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Trademark vs Domain Name

Posted by . updated on 11/11/2009
Since 1995 I have owned and used in commerce the Domain Name Xxxxx.com (?Xxxxx? is a single compound word).   A rather large company has trademarked the same Xxxxx word a couple times, but as part of phrases like ?The Farmer?s Xxxxx?.  Their claimed first use is 1993.  Now, after 16 years since their claimed first use (in a phrase), this company has applied to trademark the word ?Xxxxx? as a standalone Mark, thus jeopardizing my continued ownership and use in commerce of DN Xxxxx.com.  Both my DN and business name are the same, and not trademarked.  My mistake!
 
While classification of our goods and services differ, does my ownership and use of the Domain Name give me ?standing? to oppose their trademark application with the USPTO?  While I believe the single compound word in question is generic, I?m conflicted as to what action I should take given limited funds.  Should I oppose the application before the PTO Board?  Or, should I wait to defend 13 years of good faith use of my DN in commerce before a URDB panel when the time comes?
 
Comments and/or suggestions will be greatly appreciated.
Answers (2)
 
JSonnabend
Based on your description of the circumstances, I believe standing in an opposition proceeding should not be an issue.  Whether or not you will succeed on the merits is impossible to predict without specific details that you should not post here.

I think you likely would succeed in a UDRP arbitration, but I would want to know some additional facts before providing any further comment.

Beyond that, it's impossible to give any substantive guidance in this context because of the missing details.

- Jeff
 
 
DJoshEsq
I agree with Jeff.  That is great advice.
 

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