Legal Question in Intellectual Property in Texas

Trademark & Domain Name

I own a domain name and have a pending trademark application on it. Another individual owns a domain name that while spelled differently, is pronounced the same. He isn't doing anything with it - just sitting on it. I'm actually doing business under my soon to be trademarked name.

A good example would be if I owned the domain ''netflix-dot-com'' and did business under the name ''netflix'' and someone else was parked on ''netflicks-dot-com''. (the 'dot' is a literal period - lawguru won't let me put a URL in the question - go figure).

Once my trademark is registered, is it possible for me to take the confusingly similar name from the guy who owns it but isn't using it - in a preemptive strike against a competing site capitalizing on my name?


Asked on 3/11/09, 1:04 pm

1 Answer from Attorneys
Charles Williamson Charles J. Williamson, Attorney At Law

Re: Trademark & Domain Name

Trademarks are established and maintained through their use. If the other guy is just "sitting on it" then if you actually use it to conduct business, and can prove when you started using it and that you've continued to use it, then you become the rightful holder of the trademark. And, it would seem that - yes - once your mark is registered you can do that "pre-emptive strike."

Read more
Answered on 3/11/09, 3:11 pm


Related Questions & Answers

More Intellectual Property questions and answers in Texas