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September 15, 2014 Vol. 69 No. 17 Back to Bulletin Main Page

Four “New” Reasons to Register Your Trademarks

Many brand owners rely on common-law trademark protection in the United States. In today’s global economy, though, a trademark registration can be vital to protect the brand both in the traditional manner and in new arenas. Particularly in the context of the Internet and ICANN’s (Internet Corporation for Assigned Names and Numbers’) expansion of the domain name system, even savvy trademark owners might not be aware of the many new benefits enjoyed by registrants.

A U.S. federal registration carries with it certain well-known benefits, such as a presumption of nationwide validity and the right to use the ® symbol. It serves as a basis for Customs to take action at the ports, and as a home country filing on which an International Registration can be based through operation of the Madrid Protocol.

Beyond affording these traditional benefits, a federal registration is more important than ever to more easily and cost-effectively secure and protect rights in emerging markets and platforms. A registration can be instrumental in enforcing rights with search engines such as Google and Bing; in obtaining user names on social media platforms such as Facebook, YouTube and Twitter; and in combating other types of fraud and trademark misuse occurring online.

With few exceptions, a registration is required for a brand owner to record rights in the Trademark Clearinghouse (TMCH). The TMCH provides the brand owner with the right to register new generic top-level domains (new gTLDs) during the sunrise periods and to receive notices of potential cybersquatters’ filing for domain names matching the registered mark. It also provides warning notice to those trying to register a domain name with a mark recorded in the TMCH. Ownership of a registration also is required to take advantage of the faster, cheaper anti-cybersquatting dispute-resolution mechanism called the Uniform Rapid Suspension System.

This article discusses reasons why brand owners choose either to register or not to register their trademarks, and identifies the many new benefits that registrations confer. While it discusses U.S. benefits specifically, many of the new online benefits apply equally to all jurisdictions.

What Are the Main Reasons Not to Register Trademarks?

There are two major benefits to relying on common-law rights. The first is avoiding negative decisions or conflict. A brand owner might believe it has protectable rights under the common law, but filing an application might trigger issues that otherwise might not arise. For example, a trademark office might issue an office action rejecting the mark on grounds of mere descriptiveness, even where the owner is satisfied about the strength of its mark under the common law. Or the office action might detail a likelihood of confusion and also catch the eye of a competitor, who then opposes the filing (but does not take action against the use). In these cases, it can be better not to file for registration in the first place.

Often, though, the brand owner decides not to register a mark, in order to take advantage of the second major benefit: to save on costs. Perhaps the trademark will be used only for a short-term marketing campaign—perhaps it is an ancillary slogan—or for a regional campaign. In these cases, spending the time and money to register nationally might not provide a meaningful return on investment. Assuming no enforcement issues arise, often it is possible to save money by not filing for registration.

However, in today’s online world, very few brands are immune from attack, and the cost savings in not filing can easily be wiped out—and surpassed—by the additional costs involved in proving rights in common-law marks, or in not being able to obtain new rights in new regimes.

What Are the Main New Reasons to Register Trademarks?

1. Social Media: Protect Trademarks for User Names

Brand owners are well advised to take the proactive step of registering trademarks that they may desire to secure as user names in social media. This will also help protect against abuse of the names on social networking sites.

In 2009, Facebook began allowing members to create “user names,” which could be easily accessed at[username] and potentially could include trademarks. Before user names were allowed, Facebook gave owners of trademark registrations a limited time to identify registered marks they controlled as off limits to other users. This ensured, for example, that could be controlled only by the Walt Disney Company. Facebook required the trademark owner to submit its registration number to prove ownership rights in the mark.

While many social media platforms take a “first come, first served” approach to securing user names, if an infringer scoops the user name matching a brand, the trademark owner can take action through some platforms’ online reporting tools. Owning a trademark registration makes it much easier to prove rights and enlist the help of the social media company.

For example, Twitter states in its trademark enforcement policy that a trademark registration is required. See Twitter’s trademark policy. It appears, though, that Twitter will permit a report on nonregistered rights. Under that scenario, more information is needed, and of course there is more discretion on the part of the social media company as to whether the complaining party has indeed established viable rights.

Similarly, Youtube's online form for reporting trademark violations asks for a registration number; alternatively, you need to prove rights in the common-law marks. See Youtube’s online complaint form. Instagram likewise asks for the registration number. See Instagram’s online form.

For all practical purposes, owning a registration can improve the chances for efficient enforcement in these social media platforms.

2. Search Engines: Protect Trademarks Appearing in Ads

A trademark registration is also useful in policing unauthorized uses of marks in sponsored links triggered through keyword purchases from search engines, such as Google and Bing. 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. See Google’s online complaint form.

The search engines typically will take down advertisements that feature the trademark in the ad title or text if the advertiser does not have a legitimate basis for displaying the mark. A legitimate basis might be, for example, an advertiser’s reselling goods or services relating to the trademark. In that case, the advertiser will be permitted to display the mark in the ad, but only if the landing page is dedicated primarily to those goods or services. If the landing page sells or facilitates the sale of goods or services of a competitor of the trademark owner, then the use is not legitimate. See Google’s AdWords policy.

3. New gTLDs: Secure New Domain Names in Sunrise Periods and Deter Cybersquatters

ICANN began delegating new gTLDs in October 2013. To date, there have been 355 new gTLDs delegated, with hundreds more behind those. Trademark owners must be especially vigilant in these new online spaces. Having trademark registrations for the mark, 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. Even if the mark is not registered globally, owning a trademark registration in at least one country could be vital for protecting the name.

Only trademark registrants are eligible to take advantage of certain trademark rights protection mechanisms in the New gTLD Program, such as the Trademark Clearinghouse (unless the mark is protected by statute or treaty or is a common-law trademark validated by a court). The TMCH is an international registry under the auspices of ICANN. The owner of a registration can record the registration details in the TMCH (and can also record evidence of its use of the mark). The brand owner can also identify up to 50 verified (active) domain name labels (DNLs), from successful UDRP and court cases against abusive permutations of the registered trademark, and can link those to its verified trademark record in the Clearinghouse.

There are two major benefits for brand owners from recording trademark rights in the TMCH. First, once the TMCH validates the registration and use information, the owner can participate in the sunrise periods for newly-launched gTLDs, which allows trademark owners with recorded entries in the TMCH to register domain names matching the registered trademark before registration becomes generally available to the public. All new gTLD registries are required to hold at least a 30-day sunrise period. After the sunrise period expires, the general public can file for those domain names. Brand owners can track the launch dates for sunrise periods.

The second major benefit is that the TMCH sends trademark claims notices pertaining to domain names that match trademarks in its database. The TMCH will alert any person filing for a domain name that matches the registered trademark that the registration of that domain name may be infringing on the rights of a trademark owner, and he or she will need to acknowledge those rights before completing the domain name registration. If the domain name applicant continues and registers the domain name, the TMCH will alert the brand owner to the registration.

Recent statistics show that almost 32,000 trademark registrations have been submitted to the TMCH (see chart above). See current statistics here.

On a related note, there can be a third benefit to be had from participation in the TMCH. Some of the owners of the new gTLD registries are independently providing blocking services to brand owners with trademarks validated by the TMCH. The brand owner can apply to the Donuts Registry, for example, to block domain name applications from third parties matching those trademarks for either five or ten years, depending on the fee paid to Donuts. United TLD and Minds + Machines Registry each developed its own mechanisms to block registration of domain names that match validated trademarks without requiring trademark owners to defensively purchase domains in each of their new registries.

4. Registrations Can Carry the Day in UDRP and URS Actions Against Cybersquatters

A trademark registration also greatly assists a brand owner in taking action against cybersquatters that incorporate trademarks in domain names. ICANN has implemented its Uniform Domain Name Dispute Resolution Policy (UDRP), providing a relatively cost-effective means of taking action against cybersquatters. While it is not mandatory to own a trademark registration in order to file a UDRP action, many of the arbitrators who decide the cases are located outside the United States. If the mark is not well known in other countries, having a federal trademark registration can go a long way toward demonstrating protectable rights. A registration is also useful for proving bad-faith registration and use of the mark in the domain name. A trademark registration provides constructive notice to the domain name registrant that the trademark owner claims exclusive rights in the term. The domain name registrant thus cannot claim it had no idea that the complainant had established trademark rights in the term.

While brand owners can use the UDRP process to counter the filing by cybersquatters of infringing domain names in the new gTLDs, there is a new, more streamlined and less expensive system available regarding the new gTLDs only. The Uniform Rapid Suspension (URS) System pertains to clear-cut cases of abuse, and the remedy is the suspension of the domain name. As with recording rights in the TMCH, the URS complainant must have a registered mark or must show that its trademark has been validated through court proceedings or specifically protected by a statute or treaty; so, for practical purposes, most complainants will be relying on registrations. The complainant can submit proof of its validated rights in the TMCH to simplify its submission, as set forth in the URS Procedures (March 2013).

In summary, the registration of trademarks in the United States (and around the world) provides intellectual property owners with a variety of legal benefits and tools that otherwise would not be available. A registration now serves to facilitate protection of brands in social media sites and search engine results, and it can be instrumental in, if not mandatory for, making early filings for domain names in the new gTLDs, and in deterring and taking action against cybersquatters. These benefits of registration almost always outweigh the costs. The trademark owner risks being left behind if it does not take advantage of the opportunity to protect its key brands by registering them as trademarks. 

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. 

© 2014 International Trademark Association