URGENT Trademark question and Domain issue

[kjfirm]

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 DE recent, 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, Josh

 

[Michael Wechsler]

A lawyer will probably tell you the same thing - it all depends upon the facts and what the name is. Let us assume it is Pepsico, for example, which is a unique name. You will potentially have a problem in the state if they have already begun doing business there and may have obtained "common law" trademark rights. If they can establish that they were doing business (not just registering a name) before you, then what right do you have to force them to give up their business and domain? Because you registered a .com? That is irrelevant for the purposes of determining trademark protection.

Let us know what advice you receive but I'd be surprised if it's any different than what I'm telling you it is.