Expert: Shannon Moore - 9/26/2008

Question
Hello Shannon.  I came up with a unique term, let's say it's "asdfg."  I registered the term with GoDaddy.com and own asdfg.com since last year.  I'm now approaching a potential business partner and want to mention the term "asdfg" but have not filed for the trademark.  Since I've used the term before and can document I registered it with ICANN, am I still protected?  Or do I need to get the paperwork processed.  As a new business, I would hate to spend the money for the TM if I'm not going to use the term.  Thank you kindly.

Answer
Dear Jeff,

First, my apologies for the delay. For some reason I didn't get the notification email for your question.

For trademarks it comes down to two things in terms of protection -- usage and registration. Since you've done neither, it's going to be a bit harder to provide proof of ownership in that respect.

While you do own the domain name, that in no way implies ownership of the name in relation to a specific set of goods and/or services, which is another important factor of the trademark process.

For your situation, I'd recommend looking into an NDA, a Non-Disclosure Agreement. That's technically outside of my realm of expertise but I did a bit of research for you:

http://www.nolo.com/article.cfm/objectID/2ECF62E6-B334-4E83-9A94FA20A3FAFD38/310...

http://www.bitlaw.com/forms/nda.html

Sample form -- http://www.bitlaw.com/forms/nda.html#Agreement

Hope that helps!

Warmest regards,
Shannon Moore
http://www.tmexpress.com