How to Address Domain Name and USPTO Registrations that Interfere with Your Trademark

by / ⠀Startup Advice / May 7, 2012

If one person attempts to register a trademark or domain name that is too similar to another person’s pre-existing registered trademark, there are two relatively efficient and inexpensive courses of action that can be used to either (i) compel a transfer of rights, or (ii) prevent the registration from being issued.

As a refresher, improper use of a domain name or trademark that is too similar to a registered trademark may constitute trademark infringement, and may potentially expose the unauthorized user to liability for damages or penalties and/or loss of any claimed trademark rights. In addition, under the Uniform Domain Name Resolution Policy (UDRP), international arbitration panels have the power to award trademark owners the right to seize infringing domain names in appropriate circumstances. As a result, business owners and entrepreneurs need to take the appropriate steps to avoid selecting a trademark or domain name that has the potential to get them into trouble.

On the other side, if your trademark rights are being violated by someone else – or if someone else has applied to register a trademark that is too similar to your own – consider using these options to protect your rights and mitigate the costs of infringement and cybersquatting before they get out of control.

Domain Name Enforcement

Under the UDRP, a trademark owner can obtain an order requiring the owner of an infringing domain name to give it up if they are able to present evidence of three basic factors:

  • The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complaining party has rights,
  • The alleged infringer has no rights or legitimate interests in respect of the disputed domain name, and
  • The disputed domain name has been registered and is being used in bad faith.
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Efficiently-prosecuted UDRP actions can achieve results in less than two months.

Hotel chain La Quinta Worldwide, LEGO, Gucci, PhotoBucket, DreamWorks and other major and small companies have all recently filed UDRP actions to obtain transfer of unauthorized domain name registrations incorporating their trademarks.

USPTO Trademark Oppositions

In addition, the USPTO has a procedure in place that allows registered trademark owners to “oppose” third-party trademark registration applications that conflict with their pre-existing trademark rights. Opposing new registration applications (and identifying issues through an effective trademark monitoring program) is a critical step in the trademark protection process, as it both (i) maintains the scope and value of trademark registrations, and (ii) puts potential infringers on notice early – hopefully before they have dumped significant resources into developing and promoting “their” new trademark.

Like UDRP actions, USPTO opposition filings are typically cost-effective mechanisms for maintaining exclusivity and avoiding unwanted instances of consumer confusion.

Jay-Z, Caterpillar, Oregon State University and the Philadelphia Phillies are just a few of the major brands that have recently filed USPTO trademark registration opposition proceedings against junior users.

This day in age, brand owners simply can’t afford to turn a blind eye to potential trademark concerns. Engaging an effective monitoring service and taking prompt action against domain name cybersquatters and trademark infringers are key – and fundamental – steps for protecting your hard-earned intellectual property.

Jeff Fabian helps business owners protect their intellectual property so that they can stay focused on running their businesses.

This article is provided for informational purposes only, and does not constitute legal advice.

About The Author

Matt Wilson

Matt Wilson is Co-Founder of Under30Experiences, a travel company for young people ages 21-35. He is the original Co-founder of Under30CEO (Acquired 2016). Matt is the Host of the Live Different Podcast and has 50+ Five Star iTunes Ratings on Health, Fitness, Business and Travel. He brings a unique, uncensored approach to his interviews and writing. His work is published on, Forbes, Inc. Magazine, Huffington Post, Reuters, and many others. Matt hosts yoga and fitness retreats in his free time and buys all his food from an organic farm in the jungle of Costa Rica where he lives. He is a shareholder of the Green Bay Packers.


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