Corp name and domain name / trademark issue

Hi, I wanted to get any advice as I can get.


I will use " XCOMPANY " as my company name


So I registered my company XCOMPANY as a INC in DELAWARE,US recently, And then bought the domain exact corp name XCOMPANY.COM, then put our website up from my own idea providing a service to lawyers.

And we just recent filed for trademark reg for the company name.

then one day I was playing around looking at sites on google and found the exact domain as our corp XCOMPANY.ORG but it is a .ORG,

after reviewing things found out they registered the domain 1 year before we did being a .org.

And they are offering a service like ours, but they are not a CORP and they did not file for trademark like we did.

So my question is I do not want our corp having labeled as same company as there website. Is there anyway we can force them to transfer the domain to us if our trademark gets approved?

Even if they bought the domain before our corp was formed?

As I am getting mixed thoughts on this. and before i retain a lawyer i want to get advice, thanks

 

First usage in commerce, not company registration nor trademark filing establishes trademark rights. Even if your trademark is approved (and they only check existing Federal registrations) is does NOT mean you are in the clear. There is a five year period in which another party can come forward and contest or apply to cancel your mark based on their "prior usage". Trademarks do NOT need to be registered in the US - it's a common law trademark. Based on what you have posted, you are at risk for having your domain taken and or sued, as it would appear it is infringing upon the other parties rights. If the other party does not file to cancel your mark within 5-6 years, then you would have your mark, but you would not likely be able to enforce it on this other party as their registration/usage was prior to yours. In short, their is no way to obtain the other party's domain (unless you purchase it) and you will be lucky if they do not file suit against you for infringement. You should ALWAYS have a trademark search done before you file for a trademark and I'm going to assume you did the filing yourself and didn't go through an attorney. If I was you, I would choose a different name or approach the other company about purchasing the domain with it's associated goodwill. Of course you should seek the advice of an IP attorney, check if there are other instances of possible infringement, and to see if the name you are using is even eligible for a trademark (descriptive names for their normal usage are not unless the mark has acquired a secondary meaning).

 

we did have a lawyer do the name search, someone is just using the same .org domain to provide service, but they are not a company by any means they just have the domain, so how would i be infringing on them, when it comes to be a legal company you need to reg your business, and then to protect your name you should do trademark, thats why our lawyer that did the trademark advised us to do, but i cant reach him at the moment,

but as i said there domain they have is .org ours is .com, they are not a company, they are only a person.. we are a corp, ... so thats why i ask..

and yes i am aware of the 5 year time frame.

 

In the US, you don't need to register your business to establish trademark rights. Having a "corporation" gives you no more rights to a trademark. The fact that you have the .com vs .org makes absolutely no difference - rights go to the first person to use, and continue to use, the mark in commerce. You don't want to build a business for the next 4 years only to have this other party come along and take your domain name? Again, this is something an IP attorney needs to advise you on.

 

People have just as much rights to own a trademark as a company or corporation. From your description, if anything, you are infringing on their mark by entering into the exact same business using their name.

 

I don't know what kind of search your attorney did, but a regular Thomson CompuMark full search would have turned up the domain registration. Of course that is only the first step. The possibly conflicting mark would have to have been evaluated - was it being used in commerce, did the goods and services overlap yours, etc... The search should have raised a red flag, though.

But mjewel has answered your basic question with good solid answers, including the best answer "this is something an IP attorney needs to advise you on."