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socrateaser, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 38910
Experience:  Retired (mostly)
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I have a question about a website domain, and trademark

Customer Question

Hello, I have a question about a website domain, and trademark law. Here are the details:
Several months ago, I purchased a domain name, starting with www.the__________
After that, I spent some months, and a lot of expense building a website for the domain. Before that, I did some searches, and found no company with any similar name. However, just recently, a deeper search has revealed that another company has filed an "intent" to use the name, and an application for a trademark. Their initial application pre-dates my ownership of the domain. However, they have not been granted a trademark yet, and have actually filed 2 extensions on their application. My question is this:
If they eventually are granted a trademark, would I have to then remove my website, and stop my ecommerce business? I have registered the name in my state as a dba also. Previously I was told that if I purchased a website domain, that I had every legal right to build a website with that domain name. However, I am confused now, regarding a possible conflict with trademark law. Can I continue with the website and ecommerce business, or do I need to stop, because of a possible conflict down the road?
Submitted: 2 years ago.
Category: Intellectual Property Law
Expert:  socrateaser replied 2 years ago.
Hello, Trademark law trumps all state business name laws, as well as any domain registration laws or regulations. The question for the USPTO is whether or not you or your competitor used the name in commerce before the other. Use in commerce doesn't mean trivial transactions for purposes of establishing a trademark. It means bona fide commercial transactions using the proposed trademark. If you can prove that you used the name before the competitor filed its intent to use application, then you win. If you cannot, and the competitor actually uses the mark in commerce,, before the application expires, or is abandoned, then you lose. The collateral, and perhaps more important issue is whether or not your mark is actually confusing and an infringement of the competitor's mark. That's something that I cannot evaluate in this forum. But, if you want me to consider the issue, I can send you an additional services offer. I hope I've answered your question. Please let me know if you require further clarification. And, please provide a positive feedback rating for my answer -- otherwise, I receive nothing for my efforts in your behalf.Thanks again for using!