The problem? You find it on a website you don’t own and you have never heard of before. But you have this information trademarked. What can you do?
Well in today’s blog post I am going tell you exactly how you can use your trademark registration to protect your brand online.
Here is the video overview and if you prefer the more detailed post version you can find that below the video.
The first way to use your trademark registration to protect your brand is a Notice and Takedown Procedure.
1. Notice and Takedown Procedure:
Most people know how to protect their copyrights online because it is pretty well publicized, and there are some strong existing laws that are directly related to that. The DMCA or Digital Millennium Copyright Act requires internet service providers (ISPs) to take down infringing material once they are notified that it is on their server to take advantage of the “safe harbor” provision in the Act, or basically to be shielded from liability as an infringer.
There is currently no equivalent law to the DMCA for trademarks. Most ISPs however, have voluntarily chosen to use a similar procedure when it comes to taking down names and logos that are confusingly similar to registered trademarks. What ISPs usually do is ask you to submit the registration and if they feel like the mark is close enough then they will take it down. Many Web hosts have these set procedures in place. In addition to private websites, trademark infringements also frequently occur on mega platforms like Facebook and Youtube.
Here is more info on how Facebook’s handles improper use of intellectual property.
Here is a link to YouTube’s Copyright Infringement Notification page.
Notice and Takedown Procedures For Trademarks:
- Most ISPs have Notice and Takedown trademark policies for trademarks
- Send the ISP a copy of Trademark Registration along with the Takedown Notice
2. Domain Name Dispute
A second way you can use your trademark registration is in a domain name dispute. Let’s say someone has registered a domain name and you feel it is infringing on your trademark. For example, my company website is www.metallawgroup.com and we own the trademark METAL. If someone registers the domain www.metlalaw.com then I would be upset. It could affect our branding online, SEO, and other efforts. To initiate a domain name dispute proceeding, file a complaint with one of the arbitrators who specialize in this area. You can find some of these arbitrators online, which simplifies the process. A few highlights of what is formally known as a Uniform Domain-Name Dispute (UDRP) Proceeding include:
- process takes about 45 days
- filing fees are about $1,300 to $1,500
- worldwide jurisdiction (i.e., they handle disputes between citizens of different countries)
- arbitrators follow uniform policies created by the Internet Corporation of Assigned Names and Numbers (ICANN)
Some important things to note about the proceeding include, you should receive a decision on your filing in about 45 days, which is much quicker AND much cheaper than litigation. Filing fees are about $1,300 to $1,500; but you are not going to have to pay as much in legal fees as you would in a litigation matter, and the arbitrators all follow a uniform policy called the UDRP. The UDRP, was created by the organization that basically monitors all the internet; ICANN.
How to win a Uniform Domain Name Dispute
To prevail a disputing party (you) needs to prove:
1. The names are identical or confusingly similar.
2. The possible infringer has no rights or legitimate interest in the name. This can be a little bit tricky because sometimes trademarks can be registered in different classes, so sometimes people will have the same rights.
3. The infringing domain name has been registered and is being used in bad faith.
3. gTLD Trademark Clearinghouse
The third way I am going to show you that you can use your trademark registration to protect your brand online is to register with what is called the trademark clearinghouse.
What you need to know about the gTLD Trademark Clearinghouse
- global repository for trademarks
- maintains a database of verified ™ records
- a conflicts check before issuing new gTLDs
The gTLD is an acronym for general Top Level Domain names that are now coming out. If you have not heard of this you should take note as it will have a big impact on domain name registrations and trademark protection.
Instead of just the traditional ‘.com’, ‘.net’ and ‘.org’ top level domains that we all have gotten used to as being the only endings for internet site domains, there are now going to have many more available. For example: ‘.music’ ‘.restaurant’ .media, and possibly .yourcompanyname!
Many of the potential new gTLDs are going to be confusingly similar to existing trademarks, which is why you want your trademark registered with the clearinghouse because checking the clearinghouse database for registered marks will be part of their evaluation process before issuing new gTLDs.
It is going to cost you about $150 dollars a year to maintain your listing in the database in this clearinghouse but that is a minimal cost compared to the $185,000 dollars ICANN estimates it is going to cost to obtain a gTLD so it is a much more affordable option.
More About gTLD Trademark Clearinghouse
- gTLD = general Top-Level Domain
- Examples of current TLD are: .com, .net, .org
- Examples of new gTLD are: .restaurant, .law, .media
- New gTLD will also allow for foreign characters!
Advantages of using a gTLD Trademark Clearinghouse
A Trademark Clearinghouse Registration will allow you to:
- Watch your competitors
- Monitor applications to make sure there is not one that infringes on your trademark
- And most importantly, it will give you the opportunity to object to a mark that you feel is an infringement on your intellectual property. (Similar to the opposition period in the USPTO process)
So there you have it! These are three of the most effective ways you can use trademark registrations to protect your brand.
As always I appreciate the feedback you have given me thus far and if you would like me to write about any particular subject just let me know.