Intellectual Property Law

Effective Immediately, Trademark Owners Need To Protect Their Trademarks From Registration As Usernames On Facebook

By Sheppard Mullin

Social network Web site Facebook announced that, beginning this Saturday, June 13, at 12:01 am U.S. EDT, all Facebook users will be allowed to choose a personalized username for their Facebook profiles. This username will replace the numerical string that appears on the URL for each user's profile page. Facebook users will be able to choose names on a "first-come first-served" basis. All at once, millions of Facebook users will be choosing usernames. If you are a registered trademark owner, or represent such an owner, it's important that you immediately register your trademark(s) with Facebook at this link in order to prevent the trademark from being registered by others as a username on Facebook.

Facebook will shortly be posting a notice on each of their users pages inviting users to provide a new username. Usernames can be five or more letters, numbers or periods. Usernames can be individual names and any word or letter combinations; and although they may be the real names of the user, they may be any non-random characters which are trademarks or the names of others, perhaps famous individuals. The characters selected may be trademarks, including famous trademarks, of companies in the United States and/or around the world.

Trademark owners can attempt to prevent the registration of a username that infringes their trademark by completing the form referenced earlier in this article. Rights holders must provide a registration number for such trademark(s) on this form. Once submitted, Facebook presumably will block the registration of that trademark as a username by any of its members.

Because of the importance of this to trademark owners, and the landrush that will take place as Facebook users flock to register new usernames, a leading trademark organization, the International Trademark Association (INTA), has alerted its members to take the opportunity to fill out the Facebook form.

Companies owning registered trademarks -- and trademark lawyers on behalf of their clients -- should fill out the Facebook form immediately. Presumably, a trademark registration is necessary, as a registration number is required and, if not provided, Facebook will not block the trademark. It is unclear whether the existing registration needs to be in the United States, and/or what, if any, verification will be made or required. It appears that this is on a first-come first-served basis and no verification will be made. No explanation is provided as to why the trademark community was not given more notice of this, or why procedures were not developed ahead of time in conjunction with the trademark community, in order to protect trademarks.

Facebook notes that such usernames will be searchable through Facebook and other search engines, such as Google, so this will provide an additional opportunity for mischief or tarnishment arising from the content nature of Facebook pages, using a registered trademark as a username. Facebook is indicating that new Facebook members will not initially be able to join and apply for usernames at this time, in order to prevent a rush of cybersquatters to now register with Facebook and take advantage of these username opportunities. Facebook has also indicated that, once registered, usernames will not be transferable, although Facebook accounts and contacts certainly have the opportunity to be changed, as the individuals behind them move their Internet addresses or locations.


Authored By:

Neil R. Smith

(415) 774-3239

nsmith@sheppardmullin.com

Full post as published by Intellectual Property Law on June 11, 2009 (boomark / email).