Cybersquatter Protection 301 – The Uniform Rapid Suspension System

Speed LimitThis is the third entry in a series on how trademark owners can protect themselves from cybersquatters. The first post talked about the trademark clearing house, and the second post discussed the Uniform Domain Name Resolution Policy (“UDRP”). Today’s post will discuss the Uniform Rapid Suspension System, a/k/a URS. Contrary to what you might think, URS has nothing to do with cars, shock absorbers, or anti-lock brake systems. URS is a new, fast complaint system, set up by ICANN, that is modeled on UDRP. It is designed to be less expensive than a UDRP arbitration proceeding, and it applies to all global top-level domains (gTLD’s).

While it make take months to get a decision in a UDRP proceeding, URS is designed to provide a decision within days. The trademark owner has a relatively high burden of proof in URS proceedings. He must show by clear and convincing evidence that:

  1. The registered domain name is identical or confusingly similar to a validly registered trademark that is currently in use;
  2. The domain name registrant has no legitimate right or interest to the domain name; and
  3. The domain was registered and is being used in bad faith.

Because of these requirements, URS is best-suited to owners of well-known trademarks, and to cases where the alleged cybersquatter does not have an good claim to having a legitimate interest. If there are any key facts in dispute, the URS provider will dismiss the claim. Also, if the trademark is not registered, URS is not a good recourse.

If the URS provider finds in favor of the complaining trademark owner, the only remedy is suspension of the domain name until the registration expires. They cannot require that the domain name be cancelled or transferred to the trademark owner.

Finally, if you lose in an URS proceeding, you can appeal the decision. Thanks for reading, and stay tuned for the final installment in this series, covering the Donuts Domain Protected Marks List.

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Cybersquatter Protection 201 – UDRP

barbedwireThis is the second part of a series on trademark and cybersquatting. In the first part, I wrote about the Trademark Clearing House, an essential resource for trademark owners who want to protect their interests. Today I am writing about the Uniform Domain Name Resolution Policy, also known as UDRP.

The UDRP was established in 1999 by ICANN, the nonprofit organization that oversees the internet’s domain name system. UDRP is a system for resolving disputes about domain name registrations. It applies to all generic top-level domains, some country code top-level domains, and some legacy top-level domains.

When someone registers a domain name, he also represents and warrants that the domain name will not infringe upon or violate the rights of a third party, and agrees to submit to arbitration if a third party does bring a claim. The party bringing an infringement claim has to establish three things:

  1. That the domain name is identical or confusingly similar to a trademark that he has rights to;
  2. That the registrant does not have any rights or legitimate interests in the domain name; and
  3. The domain name has been registered and is being used in bad faith.

In the UDRP proceeding, the panel will look at a variety of factors to determine bad faith:

  • Did the person register the domain name primarily for the purpose of selling or renting the domain name registration to the trademark owner?
  • Did the person register the domain name to prevent the trademark owner from using the trademark in a corresponding domain name, and has the domain name owner engaged in a pattern of such conduct; and
  • Whether the person registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  • Whether by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, internet users to the registrant’s website, by creating a likelihood of confusion with the trademark owner’s mark.

If a party loses a UDRP proceeding, it can still challenge it in court, under the Anti-Cybersquatting Consumer Protection Act. However, if the domain name registrant loses the UDRP proceeding, it must file a lawsuit within 10 days to avoid having the domain name transferred to the other party.

In upcoming posts, I will write about the Uniform Rapid Suspension system (URS) and the Donuts Domain Protected Marks List (DPML). At that point, I will be out of acronyms, and will move on to something else. Thanks for reading!

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Cybersquatter Protection 101

Keep OutAny business with a valuable trademark has to worry about domain names and cybersquatting. This has become even more important with the sharp increase in generic top-level domains (gTLDs). Recently ICANN introduced more than 1300 new gTLDs. In this post and a few follow-on posts, I’ll talk about what businesses can do to protect their trademarks against cybersquatting.

The first key tool is the Trademark Clearing House, a centralized database of verified trademarks that is connected to all new top-level domains. A trademark owner can list its trademarks in one central database for a single fee, instead of having to list its brands with multiple domain registries during a new top-level domain’s sunrise period. A “sunrise period” is a pre-launch period of at least 30 days when a new gTLD is being introduced, during which trademark holders can register domain names before the general public has access. A trademark has to be validated through the Trademark Clearing House only once, and it can be used for any sunrise period for which it meets registry requirements. The most important takeaway here is that a trademark must be listed in the Trademark Clearing House in order to take advantage of the sunrise periods.

Another benefit is that if a third party applies for a domain name which matches a trademark in the database, the Trademark Clearing House will notify the applicant of the match at the point of registration. The applicant then has to acknowledge the rights of the trademark holder in order to continue with the registration, and the Trademark Clearing House notifies the trademark holder of the potentially infringing domain name.

Like everything in life, there is a cost. There are two fee structures, basic and advanced. The basic fee structure is for businesses that may only have one or two trademarks to list. The charge is $150 per trademark for one year, with reduced rates for multi-year registrations. The advanced fee structure is designed for owners of numerous trademarks. You get status points for each registration, and earn more status points for multi-year registrations. The number of status points earned determines how much you pay for each registration.

In future posts, I’ll discuss the Uniform Rapid Suspension (URS) system, the Uniform Domain Name Resolution Policy (UDRP), and the Donuts Domain Protected Marks List (DPML).

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TRADEMARK UPDATE – USPTO TO PROVIDE EMAIL REMINDERS

Jump for Joy!
Jump for Joy!

Good news for anyone that has registered a trademark. Beginning in January 2015, the U.S. Patent & Trademark Office (USPTO) will start providing email reminders to trademark holders that they need to make a filing to maintain their trademarks.

When you register a trademark, you have to file a Declaration of Use between the fifth and sixth year after registration, to maintain that mark. Between the ninth and tenth year after registration, and then every ten years after that, you have to file a Declaration of Use and an Application for Renewal. Up until now, trademark holders had to keep track of those filing dates on their own, maintaining calendars years into the future. The e-mail reminders will make these ongoing maintenance obligations much easier, and help trademark holders avoid having trademarks cancelled for failure to make a filing.

To take advantage of these courtesy reminders, trademark holders should ensure that the USPTO has a valid email address for them at all times. Trademark holders should also add the USPTO to their “safe senders list,” so that courtesy reminders don’t end up in the spam folder. For more information on the courtesy reminders and how to update your email address with the USPTO, you can visit this information link.

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Brand Name Protection – The Three Pillars

Recently I wrote about the importance of ensuring that your desired corporate name is available, as a key step before filing to incorporate your company. Today, I will take an even broader view of protecting your corporate name. There are three important actions to take: reservation of your corporate name, owning your domain name, and obtaining trademark protection.

First, before you even file to incorporate your company, you need to make sure your desired name is available, and reserve it for your use. Individual states allow you to reserve a name for a specified period of time, which varies from state to state. For example, Delaware allows you to reserve a name for up to 120 days, for a modest $75 fee. Once you can really visualize incorporating your company, it would be foolish not to reserve your desired name. As discussed in this post, there are good reasons for incorporating as early as possible, too.

Second, purchase your domain name, with as many relevant extensions as make sense. Dot-com, dot-biz, and dot-net are a safe minimum, but there are many new extensions, some of which are industry-specific and may make sense. Also, if you are going to operate internationally, you may want to reserve country-specific domain names for the countries you expect to operate in.

The third element of protecting your name and brand is to file for trademark protection for your brand name and/or logo. A trademark identifies your company as the source of the product or service you are selling. Having a valid trademark is going to give you greater protection than just registering a domain name. For example, you could register a domain name, and then have to surrender that domain name if it infringes on someone else’s trademark.

You can file for trademarks that are currently being used in commerce, or for trademarks that you intend to use in commerce. If you file an intent-to-use application, the US Patent & Trademark Office will not register your trademark until you can show that you are actively using the trademark in commerce. Ideally, you should be filing your application around the same time that you incorporate your business, or soon after, but the timing will depend on a variety of factors. It can take the USPTO up to a year to process your trademark application, so you will want to initiate the process as early as possible. The application fee is $275 if you file the TEAS Plus application online, or $325 if you file the TEAS application online.

There are a number of benefits to registering your trademark:

  • It discourages others from using confusingly similar marks, by making your mark easy to find in a trademark availability search
  • It protects against registration of confusingly similar marks, because the USPTO will cite prior registrations against applications for confusingly similar marks, and refuse to register them
  • Registration treats the mark as if used nationwide as of the application date, which gives you an advantage in the first-use-wins system; otherwise, your rights would be limited to the actual geographic area in which you are using the mark
  • You will have the right to sue in federal court to protect your mark, and in certain cases, you can obtain treble damages and attorney fees
  • You can use the R-in-a-circle symbol with your trademark, putting competitors on notice that you have registered your trademark (until it is registered, you can use the TM symbol).

Those are just a few of the many benefits that come from registering your trademark. By following name reservation and domain name purchases with a timely trademark application, you can secure maximum protection for your brand/company name.

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