New Reasons to Protect Trademarks Through Registration

by BakerHostetler

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.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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