March 9, 2011
Part 1 – Registering a trademark could (or could not) prevent cybersquatting
I was recently reading an article from Inc.com about actions that website owners can take to reduce their risk of becoming a victim of cybersquatting. One of the top recommendations was trademark your business name with the United States Patent and Trademark Office. I would guess if you surveyed Intellectual Property attorneys, 9 out of 10 would whole heartedly agree with this statement. As a matter of fact, San Francisco attorney Richard Stim went so far as to issue the following statement in the Inc.com article, “There are two ways you can have a trademark: it can be registered or unregistered. Having it listed in the government registry is the right way to go.” Conventional wisdom supports this; however, I am partial to a phrase at Despair.com: “Just because you’ve always done it that way doesn’t mean it’s not incredibly stupid.”
Let’s have a look shall we?
If you recognize the term MMORPG you can skip to the next paragraph. For those that don’t, the acronym stands for Massively Multiplayer Online Roll-Playing Game. For the full nerdy explanation you can visit Wikipedia (http://en.wikipedia.org/wiki/Mmorpg). One of the most popular MMORPGs is World of Warcraft (owned by Blizzard Entertainment) which had more than 12 million subscribers as of October, 2010 (this is an important date to remember). History: World of Warcraft, often referred to as WoW, was released on November 23, 2004 and was followed by two expansions; The first, The Burning Crusade, was released on January 16, 2007 and the second, Wrath of the Lich King, was released on November 13, 2008. The much anticipated third expansion was officially announced at BlizzCon on August 21, 2009, although details were discovered earlier by “leaks”. One of the details players were buzzing about was what the third expansion was going to be called.
Blizzard Entertainment set out to protect the brand name for their third expansion using conventional wisdom. They filed 5 applications with the United States Patent and Trademark Office (USPTO) on June 6th, 2009 for the term “Cataclysm.” The applications have still not been issued. The mere presence of Trademark Applications did nothing to slow down rampant cybersquatting. In fact, it appears that because the Trademarks were filed and listed at the USPTO website, and the owner was listed as Blizzard Entertainment, it served to notice those that were monitoring that Cataclysm was to be the name of the third release and the infringers went about the business of scooping up domain names; 246 names to date. Not coincidentally the timing of those registrations began in July of 2009.
Visually the impact of the Trademark applications being publically searchable is undeniable. And while the huge spike in registrations occurred in the frenzied months prior to the announced launch date, the damage had already been done. 47 of the most valuable domain names from a marketing and keyword perspective were already taken by April 2010.
What does all this mean? Well, for one I think it is safe to say cybersquatters are sophisticated enough to know, understand, and take advantage of the traditional methods for launching and protecting a brand. I also think it is safe to say that cybersquatters know it takes a great deal of time for Trademarks to issue and they are happy to profit from the USPTO’s lethargy.
This is also a clear indication that the traditional methods for brand protection need to be thrown out the window. There are enough tools available to defensively register domain names. There are plenty of services out there that can recommend strategies for launching a brand AND protect it from domain name infringement without the benefit of a Trademark.
Let’s face it, with all of the resources out there to properly deal with preventing infringement, if you stick with the “traditional” methods you’re going to look stupid.
*The information provided in this article is not legal advice, but general information on legal issues commonly encountered.