Common Law Trademark

Initially, a determination of whether the name is one for which trademark protection is available should be made. In general, marks fall into four categories:

1. Fanciful/arbitrary - a mark which has no relation to the goods or services, and was devised by the trademark holder.

2. Suggestive - a mark that suggests, rather than describes, a meaning.

3. Descriptive - a mark that specifically describes a characteristic of the goods or services. Descriptive marks can only become trademarks if they have acquired a secondary meaning associating it with the producer of the goods or services. Expressed differently, they can only receive trademark protection if, in the minds of the consumers, the mark is associated primarily with a source of the goods or services. Evidence of secondary meaning can often be shown by five years of continuous use. Other evidence may include surveys, advertising expenses, etc.

4. Generic - a mark that refers to a general class of products. A generic mark can never receive trademark protection, because this would prevent others from describing their goods.

You should also check to see if the owner of the domain name has a federal or state trademark registration. If you can learn the date on which the other party began using the name, this is also helpful.

Assuming that your mark falls into a protectable category, and that you have used the mark exclusively within a given geographic region, you have the right to exclude others from using any mark creating a likelihood of confusion within that geographic territory. Your rights are superior to those of anyone holding a federal or state registration dating after you began using the mark. However, prior federal or state trademark registrations will provide rights superior to yours.

Registration of a domain name provides only exclusive use of that domain name and does not in itself convey any trademark rights. However, common law trademark rights can arise from actual use of the domain name in connection with the sale of goods and/or services. The extent to which these trademark rights arise depends in part on whether the domain name is used to identify a source of goods and/or services instead of being used solely to indicate an internet address. In evaluating the other party's potential trademark rights, one must also consider whether the other party has used the name in another manner that would convey trademark rights.

If you find that the other party has not established any trademark rights, then you should file an application for a federal trademark registration. If granted, this registration provides a presumption of the right to exclusive use of the mark in connection with the specified goods or services throughout the US, and can also be used to force the transfer of the domain name to you.

Keep in mind that, when a federal trademark application is filed, the trademark owner signs a declaration stating, among other things, that "to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake . . . " Do not file the application unless, after investigating the other party's potential rights, you can truthfully sign this statement.

This is either your second go-around with this question or someone under extraordinarily similar circumstances posted a similar question. If this is your second go-around then you clearly have not taken to heart the information in the prior responses. If this is your first time posting then I suggest you review those responses at
http://tinyurl.com/d6o3kq . A word of advise: lawyers fire clients who ignore the advice they are given -- those clients are just not worth the trouble.