New Reasons to Protect Trademarks Through Registration


Tak­ing the proac­tive step to reg­is­ter trade­marks,
when­ever pos­si­ble, is vi­tal in to­day's on­line world.

Given the pro­posed re­lease of count­less new generic top level do­mains by ICANN (the gov­ern­ing board of the In­ter­net), hav­ing trade­mark reg­is­tra­tions not only in the United States, but in var­i­ous dif­fer­ent re­gions of the world, likely will greatly as­sist the brand owner in pro­tect­ing its rights in this new space.

ICANN has an­nounced cer­tain Rights Pro­tec­tion Mech­a­nisms for this new dot­com regime. Each of these mech­a­nisms will largely rely on in­for­ma­tion from a Trade­mark Clear­ing­house, which will col­lect in­for­ma­tion about trade­mark rights from trade­mark own­ers, au­then­ti­cate those rights, and no­tify par­tic­i­pat­ing trade­mark own­ers when new do­main names match­ing a Clear­ing­house record are reg­is­tered with a top level do­main dur­ing the start-up pe­riod. It will be crit­i­cal for brand own­ers to reg­is­ter their rights with the Clear­ing­house to al­low for max­i­mum pro­tec­tion of their brand.

To reg­is­ter rights in the Clear­ing­house, the brand owner must sub­mit a valid trade­mark reg­is­tra­tion from a na­tional or re­gional reg­istry, or proof of a court-val­i­dated word mark, or own a word mark that is pro­tected by statute or treaty. If a brand owner in­tends to par­tic­i­pate in reg­is­ter­ing a new do­main name with a top level do­main, the owner must also sub­mit val­i­da­tion for proof of use of the mark, through both a de­c­la­ra­tion of use and an ex­am­ple of how the mark is used (such as mar­ket­ing ma­te­ri­als, la­bels, or man­u­als). How­ever, val­i­da­tion for proof of use is not re­quired for record­ing data in the Clear­ing­house or for par­tic­i­pa­tion in the Trade­mark Claims – two key as­pects de­signed to help trade­mark own­ers mon­i­tor their brand. Reg­is­tra­tion with the Clear­ing­house will re­quire pay­ment of a fee. Fur­ther de­tails re­gard­ing the im­ple­men­ta­tion of the Clear­ing­house are ex­pected in the com­ing months.

We highly rec­om­mend that brand own­ers take steps to reg­is­ter their trade­marks now to se­cure rights that will have the great­est pos­si­bil­ity of be­ing rec­og­nized for in­clu­sion in the Clear­ing­house. Reg­is­tra­tion has sev­eral other ben­e­fits for brand pro­tec­tion that ex­tend be­yond the im­pend­ing changes with the im­ple­men­ta­tion of the Trade­mark Clear­ing­house.

Reg­is­tra­tions also help pro­tect against abuse of the names on so­cial net­work­ing sites. Face­book re­quired proof of reg­is­tra­tion, for ex­am­ple, when it gave own­ers of trade­mark reg­is­tra­tions a lim­ited time to iden­tify marks they con­trolled as off lim­its to oth­ers se­lect­ing their user names.

In ad­di­tion, a trade­mark reg­is­tra­tion is also use­ful in polic­ing unau­tho­rized uses of marks in spon­sored links trig­gered through key­word pur­chases from search en­gines. Sub­mis­sion of the trade­mark reg­is­tra­tion in­for­ma­tion through the search en­gines’ trade­mark abuse re­port­ing forms is an easy way to iden­tify the ex­clu­sive rights claimed in the marks.

Fur­ther, hav­ing a trade­mark reg­is­tra­tion in place also greatly as­sists in tak­ing ac­tion against cy­ber squat­ters who in­cor­po­rate trade­marks into do­main names. Brand own­ers fre­quently use ICANN's Uni­form Dis­pute Res­o­lu­tion Pro­ceed­ings to seek an as­sign­ment or can­cel­la­tion of the of­fend­ing do­main name. Many of the ar­bi­tra­tors who de­cide these cases, how­ever, are lo­cated out­side of the United States. If the mark is not well known in other coun­tries, hav­ing a fed­eral trade­mark reg­is­tra­tion can go a long way to demon­strat­ing pro­tectable rights. A reg­is­tra­tion is also use­ful for prov­ing bad faith reg­is­tra­tion and use of the mark in the do­main name be­cause the reg­is­tra­tion pro­vides con­struc­tive no­tice to the do­main reg­is­trant that the trade­mark owner claims ex­clu­sive rights in the term. The do­main reg­is­trant thus can­not claim it had no idea that the com­plainant had es­tab­lished trade­mark rights in the term.