TRADEMARK OWNERS NEED TO PROTECT THEIR TRADEMARKS FROM REGISTRATION AS USERNAMES ON FACEBOOK

Facebook has just announced that as of 12:01 AM (Eastern) this Saturday, June 13th, it is changing the way it creates and registers user names and their related URLs so that instead of a somewhat random number like “id=592952074” that is associated with a Facebook member’s user name, Facebook will be modifying the format to allow a much cleaner URL that can include the user’s real name or company name. For example, the new user name will appear as "facebook.com/branfmanlawgroup." Facebook claims that this will allow people to have an easy-to-remember way to find its members.

Sounds ok?

But here’s where it gets interesting and dangerous: Facebook is going to allow its members to register these new user names and URLs on a first-come, first-served basis and will allow the user name to include the user’s name OR someone else’s name or trademark – including yours. Why Facebook just announced this policy this week and is implementing it so quickly without giving trademark owners time to analyze and address the situation is something of a mystery.

We believe this means that trademark owners must immediately register their trademarks with Facebook as a way of stopping someone else from using your trademark as a Facebook username. Here is a link to Facebook’s Form for Preventing Registration of a Username:

It’s free!

Trademark owners must provide a trademark registration number. There is no mention by Facebook of how it will handle a trademark that is represented by a pending trademark application as opposed to an actual issued registration, but we are advising our clients to register marks that are the subject of a pending application by entering the application serial number where the registration number is asked for or to enter into their Fictitious Business Name Statement number if they do not have a pending application. We can all sort out later how Facebook is going to deal with this issue. Presumably Facebook is going to block the use of that trademark as a username by any of its members once the form has been completed and submitted.

If a company misses tonight’s deadline, Facebook will feature a grievance procedure allowing brand owners to report that someone's username infringes on their intellectual property or publicity rights. How that will work in the real world is anybody’s guess.

The new Facebook username policy is, of course, a two-sided coin: on the one hand trademark owners will want to register/protect their trademarks with Facebook today in order to protect their brands from cybersquatting by unauthorized third parties; on the other hand trademark owners may want to set up their own Facebook accounts in order to take advantage of owning some cyber real estate to promote their products and services on what is currently one of the most popular social networking websites around.

There is more that can be said about all of this, but given the shortness of time we are sending out this brief announcement now. We recommend that you take care of this now by either handling it yourself or assigning it to someone in your organization. If you would prefer that we handle it for you, please let me know. If you are already a client of ours, we obviously have a list of all of your trademark registrations and applications handy and can complete and submit the form fairly quickly and easily for you.

BRATZ Fire Back At Mattel

Here is an article about the latest shot fired in the ongoing dispute between Mattel Inc. and BRATZ-maker MGA over whether the BRATZ were stolen from the designs for Mattel's "Barbie" franchise. Last year Mattel won a judgment in court that established that BRATZ were based on designs created by a Mattel employee before he went to work for MGA. The court not only awarded money damages to Mattel, but it also eventually ordered MGA to start turning over the BRATZ inventory, trademarks, copyrights, etc. to Mattel. Now MGA has filed an appeal to the 9th Circuit Court of Appeals that argues that the judge has gone too far in transferring the BRATZ assets to Mattel. Why is this important? Aside from the significance of the monetary judgment awarded to Mattel, this case highlights how the courts have the power to transfer assets like inventory, trademarks, copyrights and patents when there has been an infringement. It also highlights how important it is to be absolutely clear with new employees that they are not bringing any of their former employer's intellectual property with them when they start their new job.

Success Story #1

One of the reasons we like what we do so much is that we have lots of fun, interesting and world-class clients. They range from sales training companies to musicians to hot-rod aftermarket specialists, clothing companies, record labels, surf wax manufacturers, direct mail and response experts and all manner of film, video and Internet-based companies. One of our most fun clients is Opper Sports, one of the world's leading surf documentarians which is run by multiple Emmy-award winner Ira Opper who has recently built an easy-to-use website that allows for entire Opper Sports library of surfing-related films and tv shows to be instantly downloaded . Here is an article about one of Opper Sports most-recent successes. We have helped Opper Sports over the years with music licensing questions, domain name disputes and general competitive strategies.

Copyrights and the Radio

It's one thing to be the songwriter of a hit song that gets tons of radio airplay. But it's another thing if you're the singer and/or the band that performs the song but didn't write it. This article explains why. In a nutshell: due to a long-standing policy in the United States (but not Europe, for example), only songwriters and music publishers get to share in the royalties that are paid by radio stations when songs are played on the radio. The band and the singer doesn't. Musicians have been trying to get the law changed for years, but so far haven't had much luck. That may change if a piece of legislation in Congress passes.

The Problems With Branding Using Geographic Terms

The City of Hollister, California is quasi-famous for being the place that inspired one of Marlon Brando's most iconic movie performances in the 1953's "The Wild One". But now it's embroiled in a legal battle with clothing manufacturer Abercrombie & Fitch because A&F started a clothing line called Hollister Co. about 10 years ago and is now trying to stop anyone anyone who uses "Hollister" for clothing - including people and businesses in Hollister, CA. This article describes the dispute in more detail.

Why is this important? Because geographic terms are very difficult - and sometimes impossible - to protect as a trademark. But that doesn't stop people from trying. We typically advise our clients to stay away from using geographic terms as trademarks for this exact reason. Meanwhile, as the dispute between Abercrombie & Fitch and the citizens of Hollister continues, it reminds us of the famous exchange between Brando and another character in the film when Brando's Johnny is asked: "What are you rebelling against?". Johnny's response: "Whadaya got?".

Bogus Trademark Monitoring & Document Filing Companies

If you own a U.S. trademark registration - or even if you have just filed a trademark application - you may receive an unsolicited official-looking notice from an organization with an official-sounding name like "U.S. Trademark Protection Service" that offers to "monitor" your trademark application or renew your trademark registration. These companies are not affiliated with the official U.S. Patent & Trademark Office ("PTO") where you filed your trademark application and it is unclear who owns, controls and operates these document filing companies. What is clear is that many trademark owners are confused by these notices. It is also clear that many of these companies appear to be practicing law without a license AND are providing incomplete advice. For example, the notices from these companies that I have reviewed usually fail to let a trademark owner know that it is important to file an "Affidavit of Incontestability" with the PTO between the 5th and 6th year after a trademark is first registered. Filing the Affidavit of Incontestability is optional - not mandatory - but it improves and strengthens the value of your trademark registration.

Here is an excerpt from the warning notice at the U.S. Patent & Trademark Office website:

Warning to USPTO Customers: Trademark Monitoring and Document Filing Companies

You may receive unsolicited communications from companies requesting fees for trademark related services, such as monitoring and document filing. Although solicitations from these companies frequently display customer-specific information, including USPTO serial number or registration number and owner name, companies who offer these services are not affiliated or associated with the USPTO or any other federal agency. The USPTO does not provide trademark monitoring or any similar services.

Such companies typically charge a service fee in addition to applicable USPTO fees. In many instances, applicants and registrants have mistakenly believed that the USPTO has issued these communications or that these companies are affiliated with the USPTO. Complaints about such companies or communications may be made to the Federal Trade Commission, at http://www.ftccomplaintassistant.gov/.

Our tips: (1) Remember that the official name of the PTO is "United States Patent & Trademark Office"; (2) If you used a lawyer to file your trademark application, contact your lawyer when you receive one of these unsolicited notices; and (3) If you filed your own trademark application or want to renew your trademark registration yourself, go directly to the PTO website at www.uspto.gov and follow the instructions.

Domain Name Tips #1 & #2

As the importance of the Internet for business grows, so grows the need to utilize smart strategies for both selecting and maintaining your domain names. Here are the first two of ten tips we've learned that you might find useful in protecting what we refer to as "Internet real estate":

1. Shop Around For Your Domain Name Registrar: In the old days, Network Solutions, Inc. ("NSI") had a virtual lock on the process of registering domain names. That's because NSI was the only official Domain Name Registrar. That’s no longer the case and lots of competitors have popped up; as a result the cost of registering a domain name has dropped. Shop around. We like GODADDY.COM where you can register a domain name for as little as about $10 a year per domain name. Ask around and see which Registrar your friends and colleagues like.

2. Make sure your business name and trademarks are registered: Registering your domain name is not the same as registering your company name or product name as a trademark, so registering your company/product name(s) as trademarks is important too. Trademarks can be registered with the State you operate in, the U.S. Patent & Trademark Office (“PTO”) and internationally. The process of registering a trademark could be the subject of a full-length article, but the USPTO website is a good place to get some basic info.

More tips will follow in subsequent postings.