Potential Brand Issues Resulting From Facebook Profile Names

11 June 2009 Publication
Author(s): Jeffrey H. Greene Richard J. McKenna

Legal News Alert: Trademark, Copyright & Advertising

It has just been announced that the popular social networking site, Facebook, is making a change to its policies that could result in unauthorized uses of your valuable, registered trademarks. Previously, Facebook has assigned non-descript names to user profiles comprising a series of numbers that have no real meaning to users of the site (e.g., “facebook.com/profile.php?id=123456789”). However, as of June 13, 2009, Facebook will allow users of the site to register a username of choice that will direct users to a particular profile (e.g., “facebook.com/foleyandlardner”). The intention of the program is to provide greater reliability in searching for a particular profile on a search engine and to allow users to create vanity names for their profiles such as “MarathonRunner” or “ScratchGolfer.” As with many intersections of technology, the Internet, and the law, the process has the potential to create issues for brand owners; however, because Facebook profiles are not limited to individuals, this development also provides an opportunity for a brand owner to proactively promote a brand.

The process for allocating these usernames — beginning at 12:01 a.m. on June 13, 2009 — will apparently be the equivalent of a land rush; names will be distributed on a first come, first served basis. In an attempt to provide safeguards for brand owners, Facebook has provided owners of registered marks the opportunity to register their trademarks in advance of the land rush. The details are unclear as to precisely how Facebook will utilize these early filings to deny an application by a third party. However, the Facebook trademark registration process is one tool currently available to brand owners to provide some level of protection for valuable marks. Facebook does not charge a fee to register a trademark; however, this pre-registration option appears to be available only for registered trademarks.

Prior land-rush processes used in analogous circumstances — such as the opening of top-level domain names — have provided specific requirements for the pre-registration of trademarks by brand owners as well as definite processes and procedures for resolving conflicts between two owners of the same brand seeking registration of the identical top-level domain name. However, the available Facebook information does not provide a detailed discussion of the procedures for utilizing the pre-registrations or resolving conflicts. Instead, the Facebook Statement of Rights and Responsibilities provides high-level guidance by prohibiting users from infringing the intellectual property rights of third parties and gives Facebook the right to remove content that may infringe the rights of a third party. Facebook has previously provided the owner of intellectual property the right to lodge a complaint with Facebook seeking removal of infringing content from a user profile, but this new pre-registration process provides brand owners one more, albeit limited, tool in a challenging environment for brand owners.

A Facebook user profile will likely not have the same visibility as a top-level domain name such as .com, .net, or .mobi, but these profile names will almost certainly appear in search engine results from Yahoo! or Google. Therefore, this new user profile registration system provides one more series of challenges for established brands and trademarks, but also provides proactive brand owners another forum in which to promote their products. For example, the owner of the well-known brand Miller Lite could create a Facebook profile and then register the user name “Miller.Lite.” Each profile is restricted to a single user name registration, so a brand owner has to put some creative thought into how best to integrate the brand into the user name. The profile user name also must be at least five characters in length, and so some brands such as Nike must be combined with another term such as “Nike.Sports” in order to be entitled to registration under the Facebook program. User names are not transferrable and are only available for profiles that were created prior to the announcement of this new program.

Overall, brand owners should consider defensively registering all key brands with Facebook in an attempt to provide some level of protection to the registered brand. Brand owners also should consider registering a profile user name incorporating a brand for use with an existing Facebook profile operated by the brand owner. Brand owners also are encouraged to register important brands with the U.S. Patent and Trademark Office (USPTO). Federal registration of a brand with the USPTO provides a range of benefits, one unexpected benefit being the opportunity to rely upon such a registration with the USPTO as the basis for registering the brand with Facebook. Additional steps to safeguard your brand include periodically conducting searches on Facebook to identify and challenge any profiles misusing your brand(s) through Facebook’s established IP infringement process.

Legal News Alert is part of our ongoing commitment to providing up-to-the-minute information about pressing concerns or industry issues affecting our clients and our colleagues. If you have any questions about this update or would like to discuss this topic further, please contact your Foley attorney or the following:

Sharon R. Barner
Chair, Intellectual Property Department
Chicago, Illinois

Jeffrey H. Greene
Chair, Trademark, Copyright & Advertising Practice
New York, New York

Richard J. McKenna (Author)
Partner, Intellectual Property Department

Jeffrey A. Kobulnick (Author)
Associate, Intellectual Property Department