Amazing that nobody pointed out that they do NOT actually have the TM yet...
Current Status: Application has been published for opposition..
Date of Status: 2009-12-01.
Get moving and file an opposition and you have a good shot at invaliding their claim on the term completely...
How long do you have to file the opposition? From what I just looked up, it's about a month and costs $300 (plus attorney fees if you are having them do it for you)...
Their first use date of Jan-03-2008 (plus their website failblog.org appears to have gone live May-2008) claimed on their TM application appears to precede yours, assuming your service began on or after the date Mar-17-2009 you registered the domain. That's a potential problem.
However, it's not a slamdunk for them ... there are numerous other domains with failblog in them, including failblog.com, which they appear to not to own; not able to verify this though due to whois privacy on the .org.
You may have a good shot at winning a UDRP challenge, but if they choose to go the lawsuit route (after UDRP or instead of; UDRP is optional!), it could get dicey - expect to spend a bundle; it'll be expensive for them too.
It may help to research who the owner of the failblog.org website is and their financial position (ie. is it a big corporation or some guy in his basement) in determining what approach(es) to take - doing nothing, hiring an attorney, challenging their TM, defending a lawsuit, negotiating settlement, etc.
It is a pretty big company called Pet Holdings. They are the starters of lolcats among other things. A network of 20 or so sites with nearly 6 million visitors.
The CEO is Ben Huh who is the one I have actually been in contact with. I actually emailed him to ask if there were any problems and he consulted lawyers to tell me I had to relinquish the domain. I went to the USPTO website to see if it was possible to file an opposition but it was past the deadline, so I emailed the Trademark attorney about it.
From what I have researched, they prefer lawsuits to UDRP takedowns. Look up failbook vs pet holdings. But that person didn't even try to fight it...
If you're speaking of the lawsuit regarding failbook.com, the owner of it utilized "framing" (url cloaking) to make their site appear to be failbooking.com.
In your situation, you're not passing your site off as being someone elses - their claim, if I understand your post correctly, is they feel your domain is too similar to theirs.
On an aside, owning 20 websites getting nearly 6 million visitors (is that per day, month, or year? [if per month or year, that's not huge]) doesn't mean the company has lots of money. It's not the quantity, but the quality. Are all their sites of the "fail" variety? Does "fail" traffic earn decent ad revenue? I don't know, but some things to ponder.
In my view, your domain isn't all that great - many other similar domains in targeting the same market; could help in defending such a lawsuit though - even if it's based on flimsy grounds, is likely going to run around $2K easily to start, and, potentially, a lot more depending on how they proceed. It may be worth the gamble to fight, especially if your site's profit is sizeable, as in many thousands of dollars per month.
More to the point, changing your domain name could be a blessing in disguise. An option to consider.
They are mostly in the humor niche for their sites.
Do they actually have a trademark yet when it shows the current status that it is showing?..
Yes, probably - statuses don't update in real-time. At this stage, barring opposition, it's practically a done deal.
But even if it's truly registered, it's not incontestible for 5 years - that may help you, should it come to litigation; likely reduce the amount of damages / actions they can legally seek.
To be clear, I'm referring to the trademark registration, which is what you're asking about.
They (and so may you!) very likely already have a "common law trademark" - google the phrase for more details.
In my view, at this point, if you're determined to fight to keep your domain, consult with an experienced attorney for suggestions / options on how to best proceed - see the "sticky" in this forum for attorney list.
Going this alone is likely a bad idea based on the questions you're asking. TM law is very arcane and often counter-intuitive - what seems right / logical, may not be in the realm of TM law.
Ya right now it's kinda just a last minute grasp but I have already started the process to move everything over. So hopefully I will be getting that done tonight.
Thanks for the help!..