¿Are trademarks getting depleted?

Harvard Law Review has sounded the alarm: English dictionary words generally, US most common surnames, and short neologisms available for registration as trademarks or domain names are running out.

It is not only that nowadays it is extremely difficult to find a domain name available for registration which does not infringe upon third parties’ rights, but simply to find out available ones.

Vocabulary of different languages is limited, and this certainly has an impact on the availability of brands and trademarks, as it does on the domain names.

Combined data of the  US Patent and Trademark Office (PTO) and of the  Corpus of Contemporary American English show, on the one hand, that 100.000 most used words in the American English, and the 151.672 most common surnames registered with the  US Census, have been already registered at an extraordinary high proportion. On the other hand, the number of words and surnames not confusingly similar to the ones registered are extremely low.

¿What about domain names?

Domain names, as brands and trademarks, have a direct and immediate on the general public. This, summed up with the swiftness and generally low cost of registration, in comparison with the very much longer deadlines and high rates for registering a trademark or a patent, leads to prior registration of a domain name before obtaining the registration of the corresponding brand or trademark.

This is mainly due to the fact that domain names’ application for registration only takes into account time for applying, in accordance with the rule first come, first served, granting ownership over the domain name to the first ever to apply – not necessarily the corresponding brand or trademark owner.

But illicit or abusive use of this prerogative has originated the phenomenon known as cybersquatting.

¿What is Cybersquatting?

Cybersquatting is the speculative (or abusive) registration of brands and trademarks belonging to third parties, which results in the illegal occupation of the cyberspace.

There are different types: from the simplest such as Typosquatting consisting of the deliberate alteration or modification of a part or character within a domain name, to the most complex, such as Bitsquatting, consisting of the leap of a bit in the transmission of data through which an user is redirected to another website

¿Can you get protection from the courts?

In Spain, either the  Law No. 17 from 7 December 2001, for Trademark Protection, and  case-law for  Law No. 3 from 10 January 1991, for Unfair Competition forbids illegal occupation of the cyberspace, and, where an infringement occurs, the courts have the power to apply sanctions. However, judicial proceedings are subject to procedural deadlines, which may be slow-moving.

¿Or would it not be better WIPO instead?

WIPO Arbitration and Mediation Center has dealt with 44.000 cases relating to cybersquatting.  WIPO procedure starts with the submission of an application that is assigned to an expert panel, whom shall issue a resolution within 45 days.

WIPO’s Uniform Domain Name Dispute Resolution Policy (the “Policy”) is approved and has been adopted by all ICANN-accredited registrars. It is applied to the resolution of the disputes concerning generic top-level domain names (gTLD) such as .biz, .com, .info, .mobi, .name, .net, .org or to second-level domain names for .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro and .travel). It is also applied to all  new gTLD. Finally, it is also applied to country-code domain names (ccTLD) for  76 countries.

However, the above-described Policy is not applied to a huge number of country code Top Level Domains, like .us (US), .de (Germany), .at (Austria), .it (Italy), .ar (Argentina), .cl (Chile), .be (Belgium), .lu (Luxemburg), .no (Norway), .fi (Finland), etc.

¿How can we help you?

Gowper helps you choose your domain name ensuring full legal certainty, prior or parallel to the application for trademark registration, in order to avoid cybersquatting or any infringement of third parties’ intellectual property rights, so you will not be made the subject of a complaint or lawsuit.

Learn more about our offer of Individualized Solutions Plans (ISPs) specially designed for helping startups and entrepreneurs, and, in particular, about our Lilac Solutions, or on our sophisticated Services & Industries.