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.