Trademark a Domain .ORG when Another Domain .COM Exists Prior and Provides the Same Service

Question

I registered xxxx.ORG (and a few other TLDs for xxxx). The xxxx.COM was already taken. The xxxx.COM was registered many years ago before I registered my xxxx.ORG and is providing the same service I am providing. There is no brick n mortar store, it appears to be one guy doing a small amount of work.

There is no trademark for xxxx.COM and on but his site says www.xxxx.com at the top. He has another domain name xxxxbbbb.COM and he refers people to email him at xxxxbbbb.COM. He also provides the same service at xxxxbbbb.COM.

At the bottom of his page he says copyright (c) 2015 www.xxxx.com

My first question is, even though he doesn't have a trademark could I be in trouble for providing the same service on other TLDs (.ORG , etc...)?

Second, I want to trademark xxxx.ORG as my trademark. Can I trademark xxxx.ORG even though he has used xxxx.COM to do business but doesn't have a trademark?

Answer 1

I am assuming U.S. law. I would always advise seeking the advice of a lawyer especially one who deals in these matters.

Trademarks are not like copyright where a copyright is automatic. However, if someone has been operating under a certain name, trademarked or not, they may have a claim depending upon whether the reasonable standard applies. In this case, it is reasonable that the two business operating under the same name may cause confusion. While you can quickly trademark the name, a counter claim can be filed based at least upon two factors: one, the trademark name was in prior use within a similar industry/business/locale; and two, there is a reasonable expectation that the secondary use of the name (yours) would cause confusion and disruption to the prior business.

All the other stuff does not apply. Only the website domain names and areas of performance and expertise matters. Copyright does not matter. E-mail address does not matter. The manner in which someone chooses to operate does not matter.

Yes. You can register a trademark for your name assuming that one does not already exist. But there may be a valid counter claim and potential civil suit to follow. But the burden would be upon the other site owner to prove his case. But be warned however, sometimes a trademark is rescinded for valid cause regardless of the weight of the claim simply because the trademark office may not want to get into a legal fight and does the expedient thing which can then open you up to a civil claim by virtue of the fact that a government entity as chosen a side. It could be a slam-dunk for the other site owner regardless of how strong your case is. I have seen this happen. Seek counsel.