Help - Foreign Company Applying for Harmful US Trademark, Possibly Targeting My Biz

[John USA]

Facts:

1. Foreign company uses a certain made up term in their business overseas, far from the US, such as "eword." (That's just an example pattern of the real term involved.) Their site domain consists of "eword" plus some more characters, and "eword" is not even the full name of their site and not even the name of their company. They appear to be quite successful.

2. A few years ago I registered a single-letter domain name in one of the new gTLDs which is similar to that term, according to this format:

"e.Word"

3. I have been using the domain and the term in commerce in the US for quite some time now, probably at least a year or more, maybe close to two years, which I believe may confer "common law" trademark rights, would it not? I have also been using the "e.Word" term as the prominent title of the business website. I have been using the site to advertise affiliate offerings, and have also usually kept notice of the domain itself being for sale or lease along with various links for that. But the commercial advertising use has always been prominent and at the top. This has been my own simple webpage, not parking pages. The industry in which I have been using the domain overlaps and is essentially the same as a lot of what the other company is doing and applying for a TM for.

4. Since I am both a commercial end user who likes to use domain names commercially, but also someone who sells domain names occasionally and advertises or promotes them for sale, it happens that I did contact this company and others some time ago to see if they wanted to buy my company's domain. At the time I felt sure that the domain was safe from any challenge. I'll bet they never would've thought of applying for this TM had I not done that.

5. I only just discovered that they are filing a 1B intent to use TM application today for the US, which they only commenced fairly recently. I have a hunch they have no real intention of even using the TM here in the US, and it's possible they are trying to both prevent me from using the mark, and possibly also create a predatory means of getting the valuable domain name from me without having to pay for it. And frankly, I'm actually more interested in just using it now and not selling, though I would still sell it under the right circumstances. I had already removed the sale or lease links and info from the site page recently.

6. I only discovered this recent TM application because I decided I finally wanted to change the name of my site from "e.Word" to "eWord," so I figured it would be a good idea to see if any TM's existed. That's when I made the surprise discovery.

7. The company made a bunch of applications including this term. A few of them are for only the "eword" term, and a few are for huge sets of terms including that and a lot of other stuff. So the main concern is the few that are just for "eword."

Fortunately only one of their applications has been "published for opposition," and the publication date is in the fall, which means I have months to file an opposition.

Now, the reality is that my real commercial use of a similar "e.Word" term in the US greatly predates their "intent to use" for which the use has not even occurred yet.

Questions: 1. Would I prevail in opposing their application, since it would tend to harm me because I have already been using a similar term in commerce? I would think it would seem so. 2. Or, if this is some predatory attempt at preventing me from using the term or at getting my site's domain, would I not prevail based on common law trademark rights even though I have no formal TM registration? 3. Do I not even need to bother filing for opposition? (I like this term enough that I want to, and it seems safer to do that.) What else is there to consider?

 

[quincy]

Facts:

1. Foreign company uses a certain made up term in their business overseas, far from the US, such as "eword." (That's just an example pattern of the real term involved.) Their site domain consists of "eword" plus some more characters, and "eword" is not even the full name of their site and not even the name of their company. They appear to be quite successful.

2. A few years ago I registered a single-letter domain name in one of the new gTLDs which is similar to that term, according to this format:

"e.Word"

3. I have been using the domain and the term in commerce in the US for quite some time now, probably at least a year or more, maybe close to two years, which I believe may confer "common law" trademark rights, would it not? I have also been using the "e.Word" term as the prominent title of the business website. I have been using the site to advertise affiliate offerings, and have also usually kept notice of the domain itself being for sale or lease along with various links for that. But the commercial advertising use has always been prominent and at the top. This has been my own simple webpage, not parking pages. The industry in which I have been using the domain overlaps and is essentially the same as a lot of what the other company is doing and applying for a TM for.

4. Since I am both a commercial end user who likes to use domain names commercially, but also someone who sells domain names occasionally and advertises or promotes them for sale, it happens that I did contact this company and others some time ago to see if they wanted to buy my company's domain. At the time I felt sure that the domain was safe from any challenge. I'll bet they never would've thought of applying for this TM had I not done that.

5. I only just discovered that they are filing a 1B intent to use TM application today for the US, which they only commenced fairly recently. I have a hunch they have no real intention of even using the TM here in the US, and it's possible they are trying to both prevent me from using the mark, and possibly also create a predatory means of getting the valuable domain name from me without having to pay for it. And frankly, I'm actually more interested in just using it now and not selling, though I would still sell it under the right circumstances. I had already removed the sale or lease links and info from the site page recently.

6. I only discovered this recent TM application because I decided I finally wanted to change the name of my site from "e.Word" to "eWord," so I figured it would be a good idea to see if any TM's existed. That's when I made the surprise discovery.

7. The company made a bunch of applications including this term. A few of them are for only the "eword" term, and a few are for huge sets of terms including that and a lot of other stuff. So the main concern is the few that are just for "eword."

Fortunately only one of their applications has been "published for opposition," and the publication date is in the fall, which means I have months to file an opposition.

Now, the reality is that my real commercial use of a similar "e.Word" term in the US greatly predates their "intent to use" for which the use has not even occurred yet.

Questions: 1. Would I prevail in opposing their application, since it would tend to harm me because I have already been using a similar term in commerce? I would think it would seem so. 2. Or, if this is some predatory attempt at preventing me from using the term or at getting my site's domain, would I not prevail based on common law trademark rights even though I have no formal TM registration? 3. Do I not even need to bother filing for opposition? (I like this term enough that I want to, and it seems safer to do that.) What else is there to consider?

What is the name of your state?

Are the goods or services offered by you and the other company in the same class?

 

[John USA]

What is the name of your state?

Are the goods or services offered by you and the other company in the same class?

The site I'm publishing is for the whole world including the US. I'm promoting the goods and services of others as an affiliate marketer. It doesn't seem like my state factors in. The goods and and services I'm promoting fall well within the same things the foreign company is applying for a TM for.

I definitely want to oppose and think it could be bad for me if I don't.

 

[John USA]

One thing I also wanted to reiterate, by the way: it's just a hunch, but I have a very strong hunch they have no intention whatsoever of really doing business in the US at all. And I wouldn't normally say that either unless it was a really strong idea. I think they have very likely only done this because of how I contacted them previously.

 

[John USA]

Hmm, I think I may know an even better option, though I will wait for more feedback here first.

 

[quincy]

Facts:

1. Foreign company uses a certain made up term in their business overseas, far from the US, such as "eword." (That's just an example pattern of the real term involved.) Their site domain consists of "eword" plus some more characters, and "eword" is not even the full name of their site and not even the name of their company. They appear to be quite successful.

A company whose mark has become recognized by consumers as an identifier for its goods/services - regardless of where the company is based - can assert trademark rights worldwide.

2. A few years ago I registered a single-letter domain name in one of the new gTLDs which is similar to that term, according to this format:

"e.Word"

Registration of a domain name does not create trademark rights on its own.

3. I have been using the domain and the term in commerce in the US for quite some time now, probably at least a year or more, maybe close to two years, which I believe may confer "common law" trademark rights, would it not? I have also been using the "e.Word" term as the prominent title of the business website. I have been using the site to advertise affiliate offerings, and have also usually kept notice of the domain itself being for sale or lease along with various links for that. But the commercial advertising use has always been prominent and at the top. This has been my own simple webpage, not parking pages. The industry in which I have been using the domain overlaps and is essentially the same as a lot of what the other company is doing and applying for a TM for.

In the US, it is the use of a mark in commerce that creates rights in the mark. In the US, it is (generally) the first to use the mark who will be the presumptive owner of the mark. In other countries, it will be the first to register a mark who will be the presumptive owner of the mark.

4. Since I am both a commercial end user who likes to use domain names commercially, but also someone who sells domain names occasionally and advertises or promotes them for sale, it happens that I did contact this company and others some time ago to see if they wanted to buy my company's domain. At the time I felt sure that the domain was safe from any challenge. I'll bet they never would've thought of applying for this TM had I not done that.

Here I see problems. You registered a domain name knowing a company was using the name as a trademark, and you attempted to sell this name to the company.

5. I only just discovered that they are filing a 1B intent to use TM application today for the US, which they only commenced fairly recently. I have a hunch they have no real intention of even using the TM here in the US, and it's possible they are trying to both prevent me from using the mark, and possibly also create a predatory means of getting the valuable domain name from me without having to pay for it. And frankly, I'm actually more interested in just using it now and not selling, though I would still sell it under the right circumstances. I had already removed the sale or lease links and info from the site page recently.

If the company has a well-recognized trademark in other parts of the world, the company would not need to register their trademark in the US in order to wrest away from you a domain name that is infringing on their trademark.

6. I only discovered this recent TM application because I decided I finally wanted to change the name of my site from "e.Word" to "eWord," so I figured it would be a good idea to see if any TM's existed. That's when I made the surprise discovery.

If the application is an intent-to-use application, there has to be evidence submitted with the application showing actual intent. For the foreign company, it must identify how the mark will be used in the US (have a plan in place to expand its business in the US).

7. The company made a bunch of applications including this term. A few of them are for only the "eword" term, and a few are for huge sets of terms including that and a lot of other stuff. So the main concern is the few that are just for "eword."

The foreign applicant had to verify on the trademark application that, to its knowledge and belief, no one else is using or has the right to use the same name in commerce in the same form or in a substantially similar form on the same or similar goods or services that would likely confuse consumers.

Fortunately only one of their applications has been "published for opposition," and the publication date is in the fall, which means I have months to file an opposition.

Now, the reality is that my real commercial use of a similar "e.Word" term in the US greatly predates their "intent to use" for which the use has not even occurred yet.

You will need to prepare your opposition, challenging the registration based on first use.

Questions: 1. Would I prevail in opposing their application, since it would tend to harm me because I have already been using a similar term in commerce? I would think it would seem so. 2. Or, if this is some predatory attempt at preventing me from using the term or at getting my site's domain, would I not prevail based on common law trademark rights even though I have no formal TM registration? 3. Do I not even need to bother filing for opposition? (I like this term enough that I want to, and it seems safer to do that.) What else is there to consider?

I cannot predict how successful any opposition will be. A lot depends on the other company.

 

[LdiJ]

Once upon a time I worked for a company that had a name related to a latin word, and sold residential product. We had been selling that residential product in the US for almost 10 years.

Another company came into the US market and sued us for the use of our trademark. This company sold a related but commercial product, and had a name that was derived from the same latin word, but was a totally different name.

This was 20 years ago. 25k in legal fees later, we settled that both of us got to keep our names selling our respective products. Today it probably would be 50k.

 

[quincy]

Once upon a time I worked for a company that had a name related to a latin word, and sold residential product. We had been selling that residential product in the US for almost 10 years.

Another company came into the US market and sued us for the use of our trademark. This company sold a related but commercial product, and had a name that was derived from the same latin word, but was a totally different name.

This was 20 years ago. 25k in legal fees later, we settled that both of us got to keep our names selling our respective products. Today it probably would be 50k.

Easily $50,000.

Because most other countries are first-to-register countries rather than first-to-use, many US companies that failed to register their trademarks in other countries have been unable to use their marks to identify their goods/services in the other countries, if another company registered the mark first.

Here there can be a first-to-use challenges launched even when a mark is not federally registered. What often happens is that one mark may have limitations placed on its use.

 

[John USA]

Thanks for the input, folks. In reply...

Clarification:

I never register domains with the intent of selling them to TM holders whose TM matches the domain. That is the very definition of "cybersquatting" and is downright undignified, not to mention not smart. In fact I'm mainly an end user who happens to also sometimes sell them.

If you have any experience with domain names, then you'll know exactly what I'm talking about next...

What I did do was simply register what is normally considered a valuable and desirable type of domain name - a single character domain, at least for some of the new TLDs which allow single character domains. The particular letter I registered would be considered among the best and most popular. So the relevant question re TM's is whether someone holds exclusive rights to the single letter involved, not a word mark consisting of the combination of "L (letter) + Whatever."

Almost inevitably, however, there are going to be some throughout the world who use the real or made up word that happens to correspond to "L + Whatever" without the dot. And also, it can be extremely likely that someone already registered the "LWhatever.com" or the "LWhateverXYZ.com" version long before the new TLD was even created. And once again, when you register the "L.Whatever" it's about who has rights to "L," not who has rights to "LWhatever." I have also been using the mark "L.Whatever" and not "LWhatever," and wanted to switch to the latter when I discovered the recent TM application for it. So for now I'm sticking with using "L.Whatever" instead because of that.

Sometime after I had already registered the single "L" in the particular TLD, it simply occurred to me to scour the Web to see how "LWhatever" has been and is being used throughout the world, and then contact them to see if anyone wanted to buy "L.Whatever." So the way I did that is the very definition of "good faith," and once again the issue is rights to the "L," not rights to "LWhatever." Parties are using "LWhatever" in various different ways, and noboday can claim exclusive rights to "LWhatever" by itself.

However...

Because there is sometimes apparently an extreme bias in favor of the rich and powerful, I vaguely recall there may have been some suggestion that those who have "Example.ExampleNewTLD" may be vulnerable to unjust decisions if someone tries to get them. I.E., the norm or legal principle has always been that only the "Example" in "Example.TLD" is what matters, but now they may be looking at the whole domain so that if someone already uses "Example ExampleNewTLD" as a word phrase in commerce then your new "Example.ExampleNewTLD" domain may be at risk, whereas in the past that was simply not so. I don't know if that is really so, but it's a concern. The decisions that happen with these kinds of things tend to be inconsistent and all over the map, and then you either do or do not have to litigate. There has been much discussion about some of them and these issues.

But without question, if this foreign company gets a US TM for "LWhatever," then since I have already been using "L.Whatever" in commerce before their 1B application, my business may suffer harm because the mark I have already been using is similar. Furthermore, their whole intention to begin with may simply be some predatory action towards "L.Whatever" after I had contacted them, since I would suggest that although it is a new TLD, the particular "L.Whatever" I have happens to really be very desirable from a commercial perspective and very valuable.

So it seems to me that one of my best options is to file for opposition before the deadline.

However, there is also this question:

In researching this matter, I read something [deleted] that I'm a bit unclear about, regarding who tends to prevail based on the timing of TM applications. The issue is this:

1. If someone already applied under 1B intent to use, and you apply under 1A first use already, then the 1B applicant still tends to prevail and I guess your 1A application gets rejected. But, is that because you started to use after their 1B application was filed but before their first use occurred, and then filed for 1A? Or, would it be the case that even if you apply for 1A after the other party has already applied under 1B, that your application should be successful if your first use occurred prior to the 1B application (and of course, you can prove it). It seems to me that would make sense:

1. Other party files under 1B. You see that, begin to use the mark, and then file under 1A while their application is pending. You lose, your application is rejected.

2. Other party files under 1B. You see that, and then file under 1A while their application is pending, but your first use has provably been going on since well before the 1B application they filed before you filed your 1A application. With those facts, it seems to me you should rightfully prevail and succeed with your application.

Furthermore to the above, you are only applying for a TM for the mark you have actually been using, "L.Whatever," not for the "LWhatever" mark without the dot you have not been using.

 

[quincy]

Thanks for the input, folks. In reply...

Clarification:

I never register domains with the intent of selling them to TM holders whose TM matches the domain. That is the very definition of "cybersquatting" and is downright undignified, not to mention not smart. In fact I'm mainly an end user who happens to also sometimes sell them.

If you have any experience with domain names, then you'll know exactly what I'm talking about next...

What I did do was simply register what is normally considered a valuable and desirable type of domain name - a single character domain, at least for some of the new TLDs which allow single character domains. The particular letter I registered would be considered among the best and most popular. So the relevant question re TM's is whether someone holds exclusive rights to the single letter involved, not the combination of "L (letter) + .Whatever."

Almost inevitably, however, there are going to be some throughout the world who use the real or made up word that happens to correspond to "L + Whatever" without the dot. And also, it can be extremely likely that someone already registered the "LWhatever.com" or the "LWhateverXYZ.com" version long before the new TLD was even created. And once again, when you register the "L.Whatever" it's about who has rights to "L," not who has rights to "LWhatever." I have also been using the mark "L.Whatever" and not "LWhatever," and wanted to switch to the latter when I discovered the recent TM application for it. So for now I'm sticking with using "L.Whatever" instead because of that.

Sometime after I had already registered the single "L" in the particular TLD, it simply occurred to me to scour the Web to see how "LWhatever" has been and is being used throughout the world, and then contact them to see if anyone wanted to buy "L.Whatever." So the way I did that is the very definition of "good faith," and once again the issue is rights to the "L," not rights to "LWhatever."

However...

Because there is sometimes apparently an extreme bias in favor of the rich and powerful, I vaguely recall there may have been some suggestion that those who have "Example.ExampleNewTLD" may be vulnerable to unjust decisions if someone tries to get them. I.E., the norm or legal principle has always been that only the "Example" in "Example.TLD" is what matters, but now they may be looking at the whole domain so that if someone already uses "Example ExampleNewTLD" in commerce then your new "Example.ExampleNewTLD" domain may be at risk, whereas in the past that was simply not so. I don't know if that is really so, but it's a concern. The decisions that happen with these kinds of things tend to be inconsistent and all over the map, and then you either do or do not have to litigate. There has been much discussion about some of them and these issues.

But without question, if this foreign company gets a US TM for "LWhatever," then since I have already been using "L.Whatever" in commerce before their 1B application, my business may suffer harm because the mark I have already been using is similar. Furthermore, their whole intention to begin with may simply be some predatory action towards "L.Whatever" after I had contacted them, since I would suggest that although it is a new TLD, the particular "L.Whatever" I have happens to really be very desirable from a commercial perspective and very valuable.

So it seems to me that one of my best options is to file for opposition before the deadline.

However, there is also this question:

In researching this matter, I read something [deleted] that I'm a bit unclear about, regarding who tends to prevail based on the timing of TM applications. The issue is this:

1. If someone already applied under 1B intent to use, and you apply under 1A first use already, then the 1B applicant still tends to prevail and I guess your 1A application gets rejected. But, is that because you started to use after their 1B application was filed but before their first use occurred, and then filed for 1A? Or, would it be the case that even if you apply for 1A after the other party has already applied under 1B, that your application should be successful if your first use occurred prior to the 1B application (and of course, you can prove it). It seems to me that would make sense:

1. Other party files under 1B. You see that, begin to use the mark, and then file under 1A while their application is pending. You lose, your application is rejected.

2. Other party files under 1B. You see that, and then file under 1A while their application is pending, but your first use has provably been going on since well before the 1B application they filed before you filed your 1A application. With those facts, it seems to me you should rightfully prevail and succeed with your application.

Furthermore to the above, you are only applying for a TM for the mark you have actually been using, "L.Whatever," not for the "LWhatever" mark without the dot you have not been using.

Your post is way too confusing for my caffeine-deprived mind to grasp. I will try to return to your post later.

In the meantime, if you want to oppose the foreign company's mark application, you can do so. You can oppose it based on likelihood of harm to your existing business operating under a similar mark, based on first use, based on your belief there is no actual intent to use the mark in the US ...

You can sit down with an IP attorney in your area for a personal review of where you stand legally in a challenge to the foreign company's registration.

 

[John USA]

Yeah I think you're right and the short more succinct version definitely works too, but I don't see why my post was deleted. I've been using forums for many years and it was certainly not the kind of post one deletes.

I may also want to pursue the 1A application as well as do the opposition.

 

[quincy]

Yeah I think you're right and the short more succinct version definitely works too, but I don't see why my post was deleted. I've been using forums for many years and it was certainly not the kind of post one deletes.

I may also want to pursue the 1A application as well as do the opposition.

Your post will be returned. A name just needed editing from it.

I have somewhere a link to a Trademark Trial and Appeal Board opinion that I thought might be interesting for you to read as it deals with an ITU challenge based on likelihood of confusion, dilution, and lack of intent to use the mark in commerce. I will locate the Opinion and post back with it later.

edit to add:

Here is a link to PRL USA Holdings, Inc. v. Rich C. Young: http://cs.foley.com/Polo_v_Rich_Young_TTAB_Opinion.pdf

 

[John USA]

Your post will be returned. A name just needed editing from it.

I have somewhere a link to a Trademark Trial and Appeal Board opinion that I thought might be interesting for you to read as it deals with an ITU challenge based on likelihood of confusion, dilution, and lack of intent to use the mark in commerce. I will locate the Opinion and post back with it later.

edit to add:

Here is a link to PRL USA Holdings, Inc. v. Rich C. Young: http://cs.foley.com/Polo_v_Rich_Young_TTAB_Opinion.pdf

Thanks a lot, I just got back online and read that. It was very interesting reading.

The foreign company is definitely doing business a million miles away in its own country and they do have a bunch of older TM registrations and applications there, with a foreign language website, so it would seem "capacity to engage" in business is there. However, I doubt they have a real intent to engage in business in the US rather than just reserve the right to the mark, and I doubt there is anything being done in the US to prepare. They appear to really be concerned with marketing and doing business with only one particular region of the world, but it's a very big region.

Now when I read this I was surprised to see mention of things like discovery and such. Say what? What, if I file an opposition is there actually going to be some kind of trial people have to attend? Or can it all be done remotely? Are there more fees beyond the $400 or $300 filing fee? If I do the "discovery" step, is there also a "discovery" fee?

I plan to DIY. I know people would say use an IP attorney, but I'm not about to go that far for this now in terms of expense. I used to work in government and I'm quite comfortable with doing the paperwork myself, and while I hate to say it myself I'm also pretty smart. I also have my weaknesses too, but I'm also quite comfortable with abstract thinking, legal reasoning and critical thinking and all that lovely stuff. The only thing I really lack is learned knowledge. In fact, I had also filed a TM application myself a number of years ago and did a pretty good job if I can say so myself.

Speaking of which (learned knowledge), I was not aware you had to get that specific about why you would be harmed. For instance, likelihood of confusion and dilution. Okay that would seem to be a no-brainer set of possibilities and I'm certainly familiar with those basic fundamentals of TM issues, but are there guidelines or is there a set of instructions which tells you just how specific you have to be when writing your opposition for instance? As you have already seen, I can get extremely verbose and thorough, but right now I was thinking more like writing "would be harmed because my business has already been using a similar mark in commerce prior to applicant's 1B application" and not throwing out terms like "dilution" or "likelihood of confusion." In fact, to be perfectly honest, I actually don't even care if they were to really use the mark in the US, if I didn't think their intention had something to do with me and preventing me from using the same or similar mark and possibly also a predatory intent regarding my valuable domain name which is perfect for it.

 

[quincy]

... Now when I read this I was surprised to see mention of things like discovery and such. Say what? What, if I file an opposition is there actually going to be some kind of trial people have to attend? Or can it all be done remotely? Are there more fees beyond the $400 or $300 filing fee? If I do the "discovery" step, is there also a "discovery" fee?

I plan to DIY ...

Speaking of which (learned knowledge), I was not aware you had to get that specific about why you would be harmed. For instance, likelihood of confusion and dilution. Okay that would seem to be a no-brainer set of possibilities and I'm certainly familiar with those basic fundamentals of TM issues, but are there guidelines or is there a set of instructions which tells you just how specific you have to be when writing your opposition for instance? ...

DIY, huh? Okay.

Following, from the World Intellectual Property Organization (WIPO), is a link to "Trademark Opposition Proceeding in the United States." It is a pretty good and clear walk-through and should tell you what you need to know.

http://www.wipo.int/export/sites/www/sct/en/comments/pdf/sct17/us_1.pdf

Good luck.

 

[John USA]

DIY, huh? Okay.

Following, from the World Intellectual Property Organization (WIPO), is a link to "Trademark Opposition Proceeding in the United States." It is a pretty good and clear walk-through and should tell you what you need to know.

http://www.wipo.int/export/sites/www/sct/en/comments/pdf/sct17/us_1.pdf

Good luck.

Well I would do the written stuff but I'm not exactly up for trying to do a deposition since I'm not an attorney.

Thanks a lot, that is extremely helpful as was your other link. That's exactly the kind of help I need.

What about this:

It's looking like if I were to choose to forgo opposing their application, I stand a good chance of simply filing a successful application of my own. What about that?

From your WIPO link, note the part in bold:

"4. Admissions

This is a device used to limit the issues in dispute. One party will ask the other to admit certain facts. For example, in an opposition proceeding where the issue is relative grounds, the opposer may ask the applicant to admit that it first used its mark on a certain date. If the applicant admits the date asserted in the request for admissions, and that date is subsequent to opposer’s date of use, the Board can consider this as evidence that the opposer has priority."

The foreign company filing under 1B for the US axiomatically shows they have no first use yet, but my first use has already been provably in place since at least January (not the year or two I had thought, unless I can find more proof I used it earlier).

Why would WIPO put a statement like that in there unless it means that the TM Board considers those who have first use as having priority over those who do not, such as in the event I were to file my own application under 1A and the foreign company wanted to oppose my application instead? How about that?

To be honest, I hate not being able to use the "LWhatever" mark myself, and had thought how great it would be to use the "LWhatever" mark on top of an "L.Whatever" website domain, but I would at least still be happy just to be able to continue using "L.Whatever" the mark on top of "L.Whatever" the site.

Should I even bother opposing? I don't really care if they are determined to use the "LWhatever" mark they already use overseas far far away. Would it be easier, better, or safer and less of a hassle to simply file my own 1A application for the similar mark I have already been provably using?

P.S. Also, while I can certainly prove I have been using the similar mark, there is no way I can claim or prove that it is actually "famous." Does that matter? I have first use, but not "fame." At least not in any normal way of understanding "famous."