Typically, each user of a social media site will have an individual username assigned to them that consists of a URL. Brand owners should secure usernames consisting of their brand name at the earliest opportunity. The existence of this username serves two purposes: first, it's used to reach consumers, and second, it can avoid problems relating to the control of the username by a third party.
The legal status of a username is unclear. Like existing domain names, few controls are available relating to who may apply for what. Typically, usernames are available on a first-come, first-served basis. As a result, it is not unusual to find that usernames made up of brand names have been previously obtained. The dispute resolution policies that apply to confusing domain names do not apply to usernames, so there is no summary type of procedure available. There may not be sufficient “trademark use” to support an action in the courts for infringement.
Most of the major social media website operators have trademark claim procedures posted on their websites relating to this situation which can be very helpful to brand owners. However, the procedures vary from site to site, and some are more helpful than others.
Frequently, only the owners of registered trademarks can take advantage of these procedures. If social media is important new brand owners should consider the availability of usernames when they choose their trademarks and develop a strategy for securing the important usernames.
As time goes by or for established brands, it is important to monitor usernames to make sure there are no abuses. However, care needs to be taken to do so appropriately to avoid being cast as a “trademark bully” in social media.
If you have questions, please contact me at mckeown@gsnh.com.
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.