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.
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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....
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.
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!
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