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[Patrick Guillot]

I would like to trademark a word, to also be used as part of a company name. The word has not yet been trademarked, but someone has registered it as a domain name. Does this work like patents and will the domain name registration negate my ability to trademark the word. Thanks in advance for all of your help.

[Lyza]

First, I am not an attorney but my company specializes in assisting attorneys with their IP prosecution and docketing work.

That said, to my knowledge, it will not.  If anything, the reverse is true.  Trademark registration can, in some cases, act as standing in seeking to obtain a domain name from a squatter or domain registrant who is not using the domain.

In addition, and as mentioned by Jeff Sonnabend in another tread, "... there is no such thing as something being 'trademarked.'  Either a name (or other symbol) acts as a trademark or it does not, ..."  You must be using the word et al. as a moniker to identify your goods, or as the name under which you provide your services, in order to obtain registration.

Again, I would seek the advice of counsel.  Hope this helps.

[JSonnabend]

Trademark registration can, in some cases, act as standing in seeking to obtain a domain name from a squatter or domain registrant who is not using the domain.

That's true in the general sense, but one must show, at least in theory, bad faith of one sort or another to wrest a domain from someone under the ACPA or UDRP (loosely speaking).  

You must be using the word et al. as a moniker to identify your goods, or as the name under which you provide your services, in order to obtain registration.

Lyza is correct.  The language quoted directly above is another way of saying, "you must be using the word as a trademark" before you can register it as such.  I'm not sure what the "et al." refers to.

- Jeff

[Lyza]

Sorry for the confusion, re: "et al."  It was a silly way of saying "word, word stylized, word and design, or design only."  Keep me honest, Jeff.

[JSonnabend]

Well, the "et" was right, but the "al." should have been a "cet."  You've been away from NY too long, methinks.



- Jeff

[Lyza]

Oooops!  'Tis true, methinks.  Withdrawal comes to mind.  Thanks.

L.