It is generally a good idea to watch for infringing uses of your trademarks, and respond when you find them. Failure to police infringing uses can result in your mark losing its ability to distinguish between providers. In the extreme case, it can become a generic term — that’s what happened to one-time trademarks like ELEVATOR and ASPIRIN.
Smart trademark owners know this, and have a program in place to watch for potentially infringing uses. It is easy enough to search through applications at the Trademark Office, or to look through the Trademark Official Gazette for potentially infringing uses that have already been approved by the Office’s examiners. In the last 20 years, search engines like Google and Yahoo! have become critical means of finding the infringing users, especially the ones who may not have filed for a trademark registration. A company with an online presence has a worldwide presence, and in the internet age an infringer doesn’t have to be next door to hurt your business.
It is also becoming increasingly important to watch domain name registrations, especially since hundreds of new generic top-level domains (gTLDs) started going active in 2014. Everyone is familiar with the traditional gTLDs, such as .com, .net, and .org. There were 23 gTLDs in 2013. By the end of 2014, the powers that be in the internet had approved more than 750 new gTLDs, and they are expected to approve hundred more in the next year or two. These include hundred tied to specific brands, like .sony, .dell, .target, and .netflix. There are many more that are more generic in their focus, such as .baby, .family, .adult, .sucks, and .mobile.
In any one of these new gTLDs, your trademark can be registered as a domain name. This creates a nightmare for trademark protection online. More than 10 million new domain names have been registered to date in the 750+ new gTLDs. Without a doubt, thousands of them are infringing registrations filed by scammers, cybersquatters, or just people trying to trade on the reputation of an established trademark owner.
Once upon a time, it was feasible to simply register your mark defensively in the important top-level domains. That is no longer an option.
Fortunately, the organization that oversees the internet — the Internet Corporation for Assigned Names and Numbers (ICANN) — has provided some additional tools to help trademark owners protect their rights. These include a trademark clearinghouse, where existing marks can be registered. Those registered marks can use a new domain name blocking service, or the Uniform Rapid Suspension System, to stop infringers and cybersquatters. The new rights protection mechanisms complement older systems, like the Uniform Domain Name Dispute Resolution Policy (UDRP) or the Anti Cybersquatting Consumer Protection Act.
These tools each have their limitations, and some are costlier than others; not all of them are appropriate to any particular case. We can help you protect your brand, respond to infringers, and even watch for infringing registrations. Give us a call to see how.