Registering trademarks can sometimes prove to be a difficult process for companies.
The practice is certainly a necessary one to ensure brands are as protected as possible and this is especially important in the online arena where businesses are often caught out by individuals registering domain names similar to that of another.
This practice is largely known as cybersquatting and has caused many organisations harm in the past.
Essentially, individuals seek to profit from or harm a particular brand by registering a domain name that is similar to that of a major brand with the aim of confusing customers into thinking they are the real company they are looking for.
Improvements on the way
Fortunately, the situation is improving as the Internet Corporation for Assigned Names and Numbers (ICANN) is rolling out its new generic top level domain names (gTLDs) that will enable organizations to protect their brand and reputation much more effectively.
Currently, there are 22 top level domains in use – ranging from the typical .com suffix to .net and .org – but this is set to expand dramatically when the gTLDs emerge and bring with them generic, brand and location specific extensions.
This will allow companies to register domain names that are much more specific and the whole process will enable more protection thanks to the initiatives that have carefully been worked out by ICANN.
Trademark law specialist Gillian Anderson of law-firm Pinsent Masons has said she believes the new gTLD system could lead to a lot more cases of cybersquatting.
However, project owner for the trademark clearinghouse Jan Corstens says this will not be the case and the Trademark Clearinghouse offers businesses essential brand protection online.
ICANN opened up the Trademark Clearinghouse in March, which invited organisations to submit their registered trademarks into this repository.
Once their trademarks are registered Brand owners may then use them to create domain names for their businesses using the new gTLDs.
One of the most crucial elements of the new gTLDs is that if a domain is registered that is the same or similar to that of a registered trademark in the Clearinghouse, then both the domain registrant and trademark owner will receive notice of that possible infringement within the first 90 days of registry operation.
This means cybersquatters will find it much harder to profit from – or damage – the reputation of a company.
Planning in advance
Registering trademarks is essential for companies looking to the future. Indeed, many companies pick up trademarks that they may never use. The reason many do this is to make sure they have the trademark in place should they wish to use it in the future.
For example, car manufacturer Jaguar recently trademarked the names ‘Q-Type’ and ‘XQ’, despite denying reports it was planning to launch a new range of sport utility vehicles. This does not necessarily mean the company will actually be releasing a new model, but it does mean that should it choose to in the future it will be able to.
The same applies for domain name registration. Several companies, especially those that release products periodically, have picked up domain names for new offerings very early on and many never actually get used.
Video game companies do this frequently, for example Warner Bros registered 15 domain names in January 2013 for its Batman series of video games. The company was clearly undecided about a name for an upcoming game that was most likely still in development at the time therefore it registered all of the prospective names it had in mind.
By doing this the company will own them and will not suffer should someone else obtain it first. When this happens, a long and costly process can commence, leading to precious time being lost and money being wasted.
In the end Warner Bros chose to name its game Batman Arkham Origins, and subsequently will use the batmanarkhamorigins.com domain. The other 14 will likely never be used unless the next game in the series is among them as well.
This gives Warner Bros the option to use the domains and stops anyone else taking it first. This is especially important for a company that has a particular franchise running as it gives people more opportunity to buy up possible names for upcoming releases.
By thinking ahead companies can ensure they are fully protected. Those organisations who have entered their trademarks into the Trademark Clearinghouse will have enhanced protection over those that chose not to.
This will enable them to register their trademarks as domains while simultaneously stopping others from infringing on their rights.
Failing to trademark a product or service can often lead to a lengthy and expensive process, which can potentially end up costing more than the trademarking would have done if it was done earlier.
Whether it is for domain name or trademark registry, forward thinking is essential for all companies looking to protect both their brands and their reputation.
For more information on domain name management and trademark registry, please contact CSC Digital Brand Services, an official agent of the Trademark Clearinghouse.