Blocking Third-Parties From Registering Trade-marks as a Facebook Username

As we reported to you in the BLG Alert entitled "Facebook Username Registration--Immediate Action Required", Facebook, Inc., the operator of the Facebook website (www.facebook.com), notified the public at 3:00 pm EST on June 9, 2009 that beginning at 12:01 am EDT on June 13, 2009, Facebook users would be allowed to create a personalized "username" for their Facebook pages. Since there was a risk that some Facebook users could attempt to incorporate third-party brands into their personalized Facebook usernames, Facebook provided an online procedure for brand owners to prevent their trade-marks from being registered as Facebook usernames. Accordingly, we advised in the BLG Alert that the relevant registration form should be completed by brand owners for each trade-mark by no later than June 12, 2009.

Facebook Users Permitted to Register Usernames

At 12:01 am EST on June 13, 2009, Facebook users who had Facebook pages registered prior to May 31, 2009 were able to register usernames on Facebook. All other Facebook users with Facebook pages registered after May 31, 2009, as well as new Facebook page holders, were able to register Facebook usernames as of June 28, 2009.

Brand Owners Permitted to Register Their Trade-marks As Facebook Usernames

Facebook has now provided brand owners with the opportunity to request a username that corresponds to their registered trade-mark: http://www.facebook.com/help/contact.php?show_form=requesting_your_username.

However, it should be noted that the creation of a Facebook username that corresponds to a brand owner's registered trade-mark requires that the brand owner have a Facebook page. In other words, it is only those brand owners who have an account with Facebook and a Facebook page that can take advantage of registering their registered trade-mark as a Facebook username. Importantly, only one Facebook username can be created for each Facebook page.

Registering a Facebook username should not be confused with the earlier process that permitted brand owners from registering their trade-marks to prevent Facebook users from registering a brand owner's trade-mark as a Facebook username. In other words, registering a Facebook username is not required in order to prevent a third-party Facebook user from registering a brand owner's trade-mark as a Facebook username if a brand owner already registered their trade-marks with Facebook prior to the June 13, 2009 deadline. This step is merely an additional measure for brand owners that already have a Facebook account and a Facebook page.

Brand owners who did not register their trade-marks with Facebook prior to the June 13, 2009 deadline may wish to create a Facebook account and Facebook page in order to register their principal trade-mark as a username with Facebook (as noted previously only one Facebook username can be created for each Facebook page). Factors that may influence whether a brand owner chooses to create a Facebook account and Facebook page may depend on the whether Facebook is a vehicle that is important to the brand owner's business and brand and/or the likelihood that a brand owner's customers or employees would create a Facebook username based upon the brand owner's trade-mark. In this regard, it should be noted that Facebook does have mechanisms to address infringing usernames on Facebook, as described below.

Further information on Facebook usernames can be accessed at http://www.facebook.com/help.php?topic=username.

Reporting an Infringing Username on Facebook

Brand owners who discover that a Facebook user has registered their trade-mark as a Facebook username can report the infringing username to Facebook by way of the following form and request the removal of the unauthorized Facebook page: http://www.facebook.com/help/contact.php?show_form=username_infringement.

All other (non-copyright) issues relating to intellectual property infringement can be reported to Facebook through the following link: http://www.facebook.com/legal/copyright.php?noncopyright_notice=1v