Trademarked LLC name vs non-TM'd domain name, who wins?

Asked over 1 year ago - San Francisco, CA

I am planning on establishing my LLC, and trademarking the company name. Under this entity I will be performing clothing/apparel sales. I have done USPTO searches, and nothing close is found. However, someone has already purchased the domain name (the same as my company name - minus the .com). This website has not been in use since 2011 (only used as a blog site). The owner does not want to transfer the domain name to me. If I register my TM, will I have uncontested rights to the name? Or under common law, can that person who owns the domain sue me for infringement - since they registered the domain name 2 years ago? Changing my company name is not an option as I've already created an extensive base of supporters under name I'm planning to use. Any help would be appreciated.

Attorney answers (4)

  1. Elizabeth Jami Oliner

    Contributor Level 7

    5

    Lawyers agree

    Answered . Once you have a lawyer help you with a trademark clearance search (and assuming it looks relatively clear), I would suggest that you do go ahead and register the trademark with the USPTO. If the owner of the domain is not using the name in connection with clothing, that party does not have a very good case to stop your use, even though that party owns the domain. You can always try to file a UDRP dispute (the administrative legal dispute process that you can go through to obtain domain names), but you would to talk to a lawyer before doing that because it may be a long shot to win it if the other party registered the domain with the true to intent to use it in the future, etc. There are other strategies you can employ to obtain domains too....

  2. Dana Howard Shultz

    Contributor Level 20

    4

    Lawyers agree

    Answered . I agree with my colleagues:
    - There is no reason to believe that you can take the existing domain name from its user.
    - Nevertheless, it can be worthwhile to obtain a trademark registration.
    - You can choose a different domain name - such as XYZApparel.com if XYZ.com is taken.

    This information does not constitute legal advice and does not establish an attorney-client relationship.
  3. Andrew Mark Jaffe

    Pro

    Contributor Level 17

    4

    Lawyers agree

    Answered . You can't take the domain name from the user by creating a trademark which you can probably do. He already owns the domain, there is nothing you can do about that.

    There are many Intellectual Property lawyers on this site. You should speak to one of them about other actions you can take. You might consider a .net, .org, .us or some other domain name that will work for you.

    This post is provided for general informational purposes only and is not intended to be legal advice specific to... more
  4. G. Todd Winter

    Contributor Level 6

    1

    Lawyer agrees

    Answered . This is a great practical example of why legal is one of the first costs experienced in all startups....to avoid very costly problems such as renaming/remarketing a company or brand. Regardless, since you are here now, if the current owner of the domain is not selling apparel, or something similar, then they would have no common law rights to a trademark in Class 025, the international class of goods for apparel. Further, to register a domain name as a trademark is much more difficult as it must have a distinct brand separate and apart from the company name to pass muster with the PTO, i.e. Amazon.com. I like the advice here to proceed with a trademark application for your brand, but please note just because you have done searches on the USPTO website, does not mean you have properly vetted the name search. In fact, the USPTO searches are extremely misleading and cause people costly problems on a daily basis, similar to non-attorney online trademark solutions. So, do your young company a huge favor and hire an attorney to help guide you through this process, including a proper search, application and filing. It will save you time and money down immediately and in the future. Many attorneys/firms, like ours, have flat fees for trademark applications. Good luck!

    WINTER LLP Is Changing The Way Legal Gets Done. WINTER LLP Offers Flat Fee Trademark, Copyright, Corporation and... more

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