We know better than anybody that lawyer-y stuff can be a real snooze fest sometimes. But, the reality is that some of that lawyer-y stuff, boring though it may be, is super important. Trademark registration happens to be one of those things. (We know, we know, we talk about it all the time, but that’s because it is SUPER important.)
If you’ve read some of our other posts on the importance of trademarking (and if you haven’t, well then I just don’t know what you do with your time), you’ve been exposed to a whole load of reasons why it’s wise to register your Trademark. This time around, we are gonna give you some shiny, new reasons to register that you might not have thought of. These reasons will be especially relevant for those of you doing business online or using social media. In other words, it’s relevant for all of you.
In an effort to reduce the boringness, we’re gonna bang this one out in a snappy little list post.
If you can already feel your eyelids getting heavy, we’ve got three words for you:
JOIN THE CLUB wake up, buttercup. This one is (reasonably) quick and painless–and pretty important!
Without further ado, for your reading pleasure:
3 Reasons The Internet Wants You to Register Your Trademark (or 3RTIWYTRYT, for short).
(Not appearing on this list, but high on the list of reasons, is that you will sometimes get to use that elusive R mark or even the cute little ™. See—isn’t it adorable? More on those here).
1. Trademarks help you stake your claim on your Social Media usernames
If you’ve got a business, brand or blog name, it seems logical that you’d want to use that name as your username on social media. What happens when you go to create your account and make the infuriating discovery that someone else has already created an account or profile using your mark? After drying your tears of frustration, the next step would be to check the policies of the appropriate social media platform you for which you are trying to register your account. There’s not too much law to lean on at this point, because these issues come down to the individual policies of the social media platform in question. However, there is some indication that, where there is a dispute over a username, and one party has registered a trademark in that name, the trademark holder may come out on top.
The most popular social media sites give different degrees of deference to holders of registered Trademarks when it comes to disputes over usernames. And again, these policies are up to the whims of the social media companies themselves, so they could change at any time. However, it’s probably wise to assume that if they are to change, they would become more (not less) favorable to holders of trademarks.
The bottom line is, when you make the unpleasant discovery that someone has already snatched up your direct link or username, having a registered Trademark in that name certainly won’t hurt. And, as you’ll see below, in many contexts it might be the thing that flips the favor in your direction.
Here’s a brief breakdown on how Facebook, Twitter, Pinterest and Instagram regard Trademark registration.
Facebook’s (infamous) Statement of Rights and Responsibilities generally prohibits individuals, or businesses, from posting material that infringes on someone else’s trademark or copyright. When it comes to usernames, Facebook reserves the right to “remove or reclaim” the username when appropriate. For example, Facebook may remove or reclaim a username when “a trademark owner complains about a username that does not closely relate to a user’s actual name.” Word on the streets is that Facebook, unlike Twitter or Instagram, will reserve usernames/direct URLs for bigger companies.
Twitter’s general policy on usernames is that they operate on a first-come, first-served basis. However, on Twitter, a trademark violation may occur when an account holder uses “a company or business name, logo, or other trademark-protected materials in a manner that may mislead or confuse others with regard to its brand or business affiliation.” Twitter emphasises that whether or not they will take action depends on whether there is “clear intent to mislead others” through misuse of the mark. However, Twitter also writes that if confusion is occurring, even without the intent to create confusion, Twitter may “release a username for the trademark holder's active use.”
Pinterest doesn’t explicitly address the rights of trademark holders versus non-trademark holders in username disputes. However, their language seems to imply that those with trademark rights (perhaps common law rights as well) can potentially have infringing use of the trademark “updated, transferred, or permanently deleted” whether it be in the form of account usernames, pinboard names or “any other content that misleads others or violates another's trademark.”
Instagram’s language on what constitutes trademark infringement within the username context is pretty identical to Twitter’s–the trademark is used “in a manner that may mislead or confuse others with regard to its brand or business affiliation.” While Instagram also has a first-come, first-served policy for usernames, those who feel that their trademark is being violated–who aren’t necessarily Instagram account holders– are asked to fill out a form, and to include a “complete trademark claim.” The trademark claim includes information about the mark and its registration as well as statements from the claimant about why they feel that the particular use infringes on their trademark. Instagram doesn’t really give insight into what factors they consider when “processing” a trademark claim specific to usernames, but, for general trademark infringement claims, they write that that processing “may result in removing the reported content from Instagram.”
2. Registrations can rattle those cybersquatters
Cybersquatting is a clever little term for those meanies who snatch-up domain names and then try to sell it to you for an exorbitant amount of money, or in exchange for your first born child. It’s a problem, and one that’s notoriously difficult to rectify. To be clear, just because you’ve registered a trademark, doesn’t necessarily mean that others don’t have a right to register a domain name including, or comprised of, that mark. However, it appears that being the owner of a registered trademark may give you an advantage when confronting cybersquatters who are squatting a domain name that includes, or is comprised of, the registered mark.
In fact, if you want to fight those nasty cybersquatters (the ones who have registered a domain name with your trademark in bad faith) having registered the trademark in question will give you serious advantages. Registered trademark owners can choose to confront cybersquatters by suing under the Anticybersquatting Consumer Protection Act (ACPA) or initiating arbitration (arbitration is sort of like the friendlier, cheaper version of a lawsuit) under the The Uniform Domain Name Dispute Resolution Policy (UDRP). In order to avail yourself of these options, you must have rights in the potentially infringed mark. And, while you might have rights in a trademark that isn’t registered, registration is likely the easiest (and most cost efficient way) to prove your rights in the trademark. Moreover, having a registered trademark helps demonstrate evidence of bad faith on the part of the cybersquatter for his or her registration of the domain name, and also makes it difficult for the cybersquatter to claim that he or she did not have knowledge that the domain name was actually a registered mark.
3. Registrations can (help to) bring down infringing AdWords
If a trademark owner submits a valid complaint requesting the takedown of potentially infringing AdWords, Google will investigate to determine if an actual violation exists. Google considers a number of factors when determining whether an ad is infringing and makes exceptions for descriptive uses of marks (that don’t relate at all to the mark’s goods and services) and for reseller advertisements (as long as certain conditions are met). However, this procedure is limited to the appearance of potentially infringing use of a mark in the text of AdWords. Google makes clear that it does not process complaints regarding potentially infringing URLs that contain marks or the use of trademark terms in keywords. Although it’s not entirely clear how Google’s investigation of potentially infringing AdWords text is conducted, it is pretty clear that the ability to complain is limited to actual trademark owners. So, in the context of AdWord infringement, one would have no standing to complain unless their mark was registered.
There you have it! Three internet-inspired reasons to get your trademark registration on, and to get it on, like, now. Remember: the internet is a dark and mysterious place where things can change in an instant (and old, incredibly unflattering photos of you seem to surface out of nowhere, but that’s beside the point). Keep yourself up to date on the policies and practices of the online tools and platforms you use and make policing your intellectual property online a regular practice. Vigilance kids, vigilance!