We are seeking an experienced U.S. trademark attorney to advise on a potential trademark conflict involving prior use, domain ownership, and a later trademark registration by another party for one of our clients whose marketing account we manage
Background (Confidential):Our client has owned a domain name since 2014 and formed a U.S. California corp shortly thereafter using that name.
A separate international company (based in Saudi Arabia) later registered a similar domain (plural variation of the name).
A different U.S.-based company (Michigan) subsequently registered a trademark in 2021 that appears to match or closely resemble our client’s business name and domain.
We are seeking guidance on:
Priority rights based on earlier domain ownership and business use versus a later U.S. trademark registration.
Whether the later trademark registration may be challenged or opposed based on prior use.
Legal risks of continuing to operate under the current name (same/similar name, different branding and domain variations).
Whether multiple entities (U.S. and international) can operate under similar names in this context.
Estimated cost and process for filing a trademark application and/or taking action (e.g., opposition, cancellation, or defense).
Additional (Optional):We may also seek advice on U.S. advertising compliance as it relates to branding and marketing under this name.
Requirements:
Licensed U.S. attorney with strong experience in trademark law
Experience with USPTO filings, office actions, and disputes (opposition/cancellation)
Ability to assess risk and provide clear, practical guidance
To Apply:Please include:
Relevant experience with similar trademark conflicts
Jurisdiction(s) of licensure
Estimated consultation fee or hourly rate
We are initially seeking a consultation, with the potential for ongoing legal engagement.