Legal Question in Intellectual Property in Oregon

Re: Tradename infringement of a non-profit

Many issues raised here, and you really should have a conversation with a trademark lawyer. That said:

First general principle of trademark law is that there is only one "senior" user, and everyone else is an infringer. Common-law trademark rights arise under federal law as of the first bona fide use in interstate commerce, so on your facts the registration issue is irrelevant. Being in different states likewise is irrelevant if the field of use is online and there is actual (or likely) customer confusion and the goods or services offered are similar.

The inquiry does not end there, however. Trademarks fall within a continuum of good to useless. There are artificial constructs (i.e., a made-up word that did not exist previously, like Exxon), arbitrary marks (like Apple Computer, where there is a word that has no previous association with the goods or services), suggestive marks (where the mark suggests but does not describe a characteristic of the goods or services, like Tide detergent), descriptive marks (where the mark merely describes the goods or services, like "[your town] Savings Bank"), and generic marks (such as "Furniture Store"). Thus, if the domain name were "www.furniturestore.com", it would be valuable for purposes of generating traffic but utterly worthless as a trademark.

Finally, don't make too much of the willingness of the senior user to try to cooperate rather than enforce its rights. That non-profit entity could turn on a dime and do what the law wants (namely, stamp out the infringing use), and if you goad them into it you may well bring this about. Tread carefully and get professional help.

Best wishes,

LDWG