BabyMaker vs. iBabyMaker iPhone Application

[pattyo1]

What is the name of your state (only U.S. law)? California.

Hi there. My company, has created and sold an iPhone application in the Apple Store called "XX"". It began selling in iTunes on June 20th.

We noticed another application called "XX2", and issued a cease and desist on infringement of our trademark, based on the fact that this application began selling after ours.

However, they came back to us with a cease and desist letter explaining that we should actually take our application out of the store because they have the domain name which was registered in September of 2008, and citing the exact same things we cited in our initial letter to them.

My question is, does the time of the registration of a domain name give them legal grounds to demand a cease and desist of our application and related websites? Even though our app went on sale first?

Any help would be greatly appreciated. Thank you!

 

[pattyo1]

Based on initial research, owning a domain name does NOT automatically protect a trademark. Trademark rights vest in the first person or company to use the mark as a brand IN COMMERCE. Therefore, your arguments about who owns which domain names and for how long is irrelevant to the legal matter. You could of owned the domain name for years, but until you had a product on sale, in commerce - that which was the intended use of the website and name, you do not own the rights to the mark.

Since we were the first company to use the mark at issue in commerce, we should be ok.

Please respond with your thoughts on these findings. Thank you!