Personalized Facebook URLs and Potential Trademark Issues
Intellectual Property Update 06/11/09 Robert L. Titley, Hillary J. Wucherer, Richard W. Young
When and what?
Beginning at 12:01 a.m. (EDT) on Saturday, June 13, 2009, Facebook users and page administrators will be able to select a username that will determine their site's plain-language, personalized URL (e.g., http://www.facebook.com/yourusernamehere). Currently, Facebook pages have a randomly assigned number as the URL. This change will allow Facebook users to more easily direct visitors to their pages and use their URLs on advertisements, company Web sites and business cards.
However, this change also means that unscrupulous users could try to reserve URLs that contain others' trademarks (e.g., http://www.facebook.com/yourbrandhere). With this in mind, Facebook has taken steps to prevent username abuse, including:
Allowing U.S. trademark owners to prevent users from selecting their marks as usernames.
Reserving the right to remove or reclaim any username at any time.
Imposing eligibility requirements for username selection to prevent username squatting:
Only existing personal users and established page administrators will have the opportunity to select usernames on June 13.
Eligible personal users include those who joined Facebook before the username announcement at 3 p.m. (EDT) on June 9, 2009.
Eligible page administrators must have had a Facebook page that (1) was in existence as of May 31, 2009 and (2) had a minimum 1,000 fans at that time.
However, this limitation is temporary, and all users who joined Facebook after the cutoff will be eligible to claim usernames on Sunday, June 28, 2009.
Employing a strict no transferability policy regarding usernames, even when original users remove their accounts from the site.
What do I need to do?
Registered U.S. trademark owners that wish to prevent users from selecting their trademarks as usernames should notify Facebook of their rights. Facebook has provided an online form for this purpose. The "Preventing the Registration of a Username" form can be accessed here: http://www.facebook.com/help/contact.php?show_form=username_rights.
The form requests the following information, and each registration must be submitted individually:
Declaration that the individual completing the form is the owner of the mark or a person legally authorized to act on behalf of the trademark owner.
The form seems to indicate that only usernames corresponding to U.S. registered marks are protectable; however, we recommend that applicants for federal U.S. trademark registration enter the application serial number in lieu of the registration number. The form does not seem to delineate between the Supplemental and Principal Registers, and we recommend that registrants submit all U.S. registrations and applications that they feel are in danger of infringement.
If, after the username selection period opens, a mark owner discovers that a user has already begun using a registered U.S. trademark as a username, then the mark owner can report the infringement through another online form.
This form is a little more involved and requests the following information:
- Mailing Address.
- Description of infringed rights.
- Declaration that the individual completing the form is the owner of the rights or a person legally authorized to act on behalf of the rights owner.
- Infringement location and how the content infringes the owner's rights.
- Declaration that the use is not authorized.
- Electronic signature. the type of industry.
How much is this going to cost me?
Notifying Facebook of IP rights and infringement is free of charge.
Why is this important and how would this affect my company or me?
Although Facebook maintains a reporting system for IP Infringement and reserves the right to revoke a username at any time for any reason, an ounce of prevention may be worth a pound of cure in this case. There is no guarantee that Facebook administrators will have the manpower to deal with what is certain to be a deluge of alleged infringement allegations. We recommend that registered trademark owners take preemptive measures and submit the required information regarding their registered trademarks through the "Preventing the Registration of a Username" form: http://www.facebook.com/help/contact.php?show_form=username_rights.
If you have questions about personalized Facebook URLs or how the changes could affect your intellectual property rights, please contact Robert Titley at 414-277-5615 / firstname.lastname@example.org or Hillary Wucherer 414-277-5723 / email@example.com in Milwaukee, Richard Young 312-715-5260 / firstname.lastname@example.org in Chicago or your Quarles & Brady LLP attorney