By: Alex Gutman, Brandshield
If you thought that international trademark protection was a hassle in the real world, just think of how much of a headache it is in the online world.
In this post I'll be expounding on what is trademark protection and what it means for brands on the Web, why it's important to your brand, the challenges of doing it online and why brand protection software goes a step further than ICANN's safeguards and can help you meet this challenge.
You see trademarks in the real and cyber world every day. Coca Cola, Doritos, McDonald's, Mercedes, etc. A trademark can range from being a sign, expression, sound, word, name, logo or design that identifies a product or service from a specific source and is distinctive. The owner of the trademark can range from being an individual, organization, company or any other legal entity. Trademarks can be displayed on corporate buildings, labels, packages or on an actual product. Trademarks are also referred to as brands or brand names.
In order to protect these distinctive symbols, sounds, designs, logos, etc. entities must register them as a trademark. One of the reasons why many businesses who have distinctive brands do not take this approach is because many of them feel that by registering a company or a domain name, they are protecting themselves and their brands. This could not be further from the truth. Scenarios like this do not give entities authoritative rights over that brand just by registering it. An entity's ability to, say for example, sue another for use of their trademark is dependent largely on how popular it is, the strength of its goodwill and if the brand is already registered as a trademark. It can get pretty complex, much too complex for a guest post. Let's just say that the most solid protection an entity can get is by registering their brand as a trademark.
Trademark Protection in the Online World
With the new development of about 1400 new gTLDs becoming available over the coming year and beyond, ICANN (Internet Corporation for Assigned Names and Numbers) has bought into and is promoting the use of the “Trademark Clearinghouse” that will enable the holders of trademarks to implement protection of their brand(s) with a single action that would encompass all the new domains (right of the dot) within the Domain Naming System (DNS). ICANN has been working with experts in the field of Intellectual Property and a slew of community stakeholders to institute the mechanisms needed to empower international trademark holders to protect their brands and identities during the gTLD expansion.
The process that ICANN has implemented is enforced by authenticating the rightful trademark owners and passing along this information to the many registrars in the market. When a brand registers a trademark with the clearinghouse, they are essentially protecting themselves as they are alerted by this entity whenever a domain matching the trademark crosses through its system and the rightful trademark holder will be granted a 90-day period to claim their brand. This is a huge development that ICANN envisions will save the authenticated trademark holders time and money.
The Online Challenge
Trademark and Brand Protection is very challenging in the real as well as virtual world. Protecting your brand online goes much deeper than what ICANN's mechanisms seek to prevent, the infringing of your trademark. Though, the Trademark Clearinghouse is a good start and a step in the right direction, there are quite a few loopholes that are inherent and I wanted to highlight some of them.
A company for instance, once authenticated, cannot register a misspelling of its trademark, which leaves the door open to TypoSquatters who would be free to register misspellings. The system would also not be able to flag registrations that carry trademarks with keywords such as AdidasRunningShoes for example. With the availability of some 1400 new gTLDs there will be so many variations out there that TypoSquatters will be free to register and drive traffic to their bogus sites instead of yours; leaving money, namely yours on the table.
Brand Protection System
Because of a loophole such as this, it is recommended to have some sort of brand protection system in place as such a system goes further than what this clearinghouse mechanism does, especially with regards to proactively identifying domains that not only threaten your brand as in the instance of TypoSquatting. Such a system for example, will use statistic-based data along with keyword and semantic analysis that is so sophisticated and customized to your brand that it will facilitate the identification of domains that will help you build a solid gTLD strategy to strengthen your brand and increase its equity.
Additionally, a Brand Protection System utilizes sophisticated algorithms that work round the clock scanning the Web, not just a database of registered domain names. It will free up your resources and empower you to focus your energies on websites that present the most risks. These types of systems also help brands respond to infringements with such features as Cease and Desist modules that contact suspected infringers with customized templates.
So, as you can see, while ICANN's safeguards are welcome, they do not make up for having a full-blown brand protection system in place. After all, you spent years building your brand, why leave it exposed in the WWW (Wild Wild Web).
About the Author
Alex Gutman is Brandshield's evangelist and has more than 20 years of experience in the IT industry. With a passion and prowess for writing and an eye for opportunities coupled with a solid base in technology, he strives to evangelize technologies in a way that people can understand. He has been using the Internet since 1985. Feel free to check out BrandShield's new blog. Like them on Facebook. Follow them on Twitter.