In the second of three posts about how brand owners can protect their trademarks from misuse, I will focus on two concepts: the role of “use” and registration in protecting your brand, and domain names—specifically acquisition and protection.

Internet domain names have emerged as a major battleground for brand promotion and protection. While it is easier than ever to register and promote your name on the internet, it is also easier for others to trade on another brand’s equity. Online commerce and auction sites arguably make it easier for counterfeiters and producers of “knock off” goods to promote their own products at the expense of the established brand. The use of keyword advertising with search engines to affect diversion (a searcher types out an insurance company name when they need to get car insurance, and the first link they see is a paid advertisement for another insurance broker) is another risk, as is the obvious risk that someone may claim, or even hijack, your brand as a domain name (i.e. you promote the brand YAH-BOO, and someone else registers the domain name).

It is the right of every brand holder to maintain, defend and promote their own brand, unless that brand infringes on the rights of another. In the United States, one of the easiest and most obvious ways to defend your brand is to use it. The United States is a “first use” country, meaning that even if you don’t file for a trademark with the U.S. Patent and Trademark Office (USPTO), you can still claim rights to a brand by using it in the marketplace. In fact, the first person or company to use a trademark will usually trump the first person to file the name with the USPTO. Building brand recognition and distinction is the best way to cement the brand contract with the public. Registering a domain name and promoting the brand on that site is an excellent step, as is establishing and proving sales. Once this is established, and the brand is distinctive from others, a defacto level of trademark protection will automatically be conferred in the U.S.

Filing for a trademark with the USPTO is another way to provide constructive notice that you attempt to use and defend the name. This can be coupled with a TM or circle-R symbol placed near your name (the circle-R can only be used if you actually have a registered trademark). Having your trademark accepted and registered with the USPTO is a sure way to establish rights. Before registration, the USPTO will conduct an examination to determine if they feel you have a sufficiently distinctive and valid trademark. Your registration becomes a matter of public record and your trademark can be defended in federal court.

If your brand is perceived to infringe on another, you can expect a challenge. If you face a legal challenge, state and federal district courts can be used to defend your brand. A direct challenge to your filed or registered trademark with the USPTO can also be defended through the Trademark Trial and Appeal Board (TTAB) branch of the USPTO. In the case of domain names, you can also use the Uniform Dispute Resolution Policy (UDRP), administered by the Internet Corporation for Assigned Names and Numbers (ICANN), to either challenge another or defend a challenge to the use of a domain name. To prevail in a UDRP proceeding, a trademark owner must: prove that: (1) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) The registrant does not have any rights or legitimate interests in the domain name; and (3) The registrant registered the domain name and is using it in “bad faith.”

The AntiCybersquatting Consumer Protection Act (1999) also allows U.S. domain holders to challenge domains that are confusingly similar to a famous mark, or domains registered in bad faith (i.e. registering an incorrect spelling or mistyping of a popular domain name like gooogle.com or to hold a domain for ransom from the proper brand holder). While the fame and distinctiveness of the mark is certainly a factor in whether or not a website might be confused with another, these resources are available for all brand holders.

Related Links:
Creating, Protecting and Defending Brand Equity - Part 1