Beginning June 13, 2009, at 12:01 a.m. EDT (June 12, 2009, at 9:01 p.m. PDT), Facebook will allow current members to select a username that will be associated with their personal profile or their Facebook Page (which is a profile page for a business, brand or public figures). The selected username will appear at the end of the facebook.com URL in the location bar of the browser window in place of the current randomly assigned numerical reference. An example of the use of a username would be: www.facebook.com/perkinscoie.
This Update provides a summary of key points of Facebook's new username feature and policies and offers practical advice for trademark owners.
Important Implication for Trademark Owners: The implementation of usernames on Facebook has important implications for trademark owners who may want to prevent a Facebook user from selecting their trademarks as a username. For trademark owners who have Facebook Pages, it may be important to act quickly to secure their trademark as the username for that Page. This is particularly important where there may be others with similar names in other industries who may claim a desired username (e.g. United Airlines vs. United Van Lines).
Facebook has implemented several procedures that are intended to help intellectual property rights holders protect their rights in their trademarks:
Usernames Initially Available Only to Existing Facebook Users.
For personal profiles, only users who were Facebook members prior to 3:00 p.m. EDT on June 9, 2009, when usernames were announced, will be allowed to select a username on June 13, 2009. Selection will be on a first come, first serve basis. This limitation was instituted to prevent individuals from creating Facebook profiles simply to reserve a trademarked username. New users will be eligible to reserve a username on June 28, 2009. For Facebook Pages, you must have been live on Facebook prior to the May 31, 2009 cut-off date and have had a minimum 1,000 fans at that time to select a user name. It is not clear whether Pages with fewer than 1,000 fans or that were live after the cut-off date will be able to register on June 28, 2009. Users will be able to select a user name at: http://www.facebook.com/username/
Trademark Owners Can Prevent Trademarks from Being Registered as Usernames. Facebook is allowing trademark owners to prevent their trademarks from being registered as usernames. This can be done by filling out an online form located at: http://www.facebook.com/help/contact.php?show_form=username_rights.The form must be filled out by the owner of the trademark or someone authorized to act on behalf of the trademark owner. Also, the trademark registration number must be provided for the trademark being protected. Because a trademark registration number must be provided, it appears that trademark owners can only restrict registration of usernames for trademarks for which they have a registration.
Trademark Owners Can Submit an Intellectual Property Infringement Form.
Facebook has an online Intellectual Property Infringement form that can be completed by any person who believes someone's username infringes its trademark rights. That form can be located at http://www.facebook.com/copyright.php?noncopyright_notice=1
. It is not clear yet how Facebook will resolve disputes, but Facebook does reserve the right to remove usernames at any time and for any reason.
Assignment of Usernames is Not Permitted. To prevent name squatting, Facebook is not allowing usernames to be assigned. It is not clear yet whether usernames that Facebook has removed due to an infringement notice will then be made available to the trademark owner or will simply be put out of circulation. If it is the latter, then it will be all that much more important for trademark owners to act quickly to make sure that others cannot register their trademark as a username.
Register Your Trademark(s) With Facebook Immediately! If you own a trademark registration, we recommend filing your trademarks with Facebook immediately to prevent your key trademarks from being selected by third parties as a username.
Select a Username for Your Facebook Page. If you have a Facebook Page and meet the qualifications, we suggest going through the process to select a username corresponding with your trademark as soon as possible after the opening of the username selection period on June 13, 2009 at 12:01 a.m. EDT (June 12, 2009 at 9:01 p.m. PDT). Delay will likely cause you time and expense down the road if a third party selects your trademark to serve as its username and you find that someone with a legitimate right to the same name for an unrelated offering has beat you to it.
Be Careful When Selecting a Username. Once a username is selected for a profile, it cannot be changed, so choose carefully.
This Update is only intended to provide a general summary of Facebook's new features and change in policy. There are still some areas of uncertainty in this new process and policy. As new information becomes available, we will be posting updates on digestiblelaw.com.
If you have any questions or need any assistance registering your trademarks with Facebook, please contact the Perkins Coie attorney with whom you work or:Lynne Graybeal
, 206.359.6485 Grace Han Stanton
, 206.359.6483 Lisa Oratz