Alert

Who does this affect?

Any owner of a registered trade mark.

What do you need to do?

Notify Facebook of the trade marks which Facebook members should be precluded from claiming as their username.

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Cheng Lim  
Partner
T +61 3 9643 4193

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Natalie Hickey  
Partner
T +61 3 9643 4156

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Sydney
Scott Bouvier  
Maurice Gonsalves  
Katrina Rathie  

Melbourne
Robert Cooper  
Natalie Hickey  

Brisbane
John Swinson  

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Users of the popular social networking website Facebook will shortly be able to customise the URL of their Facebook profile pages (eg. http://www.facebook.com/username). From 2.01 pm AEST tomorrow, existing users of Facebook will be able to select their alias on a first-come, first-served basis. Any owner of a registered trade mark should immediately notify Facebook of the trade marks which should be excluded from being claimed by Facebook users.

Facebook is allowing trade mark owners to do so by completing an online form.

What this means

Trade mark owners will need to act quickly to ensure that they are not left behind in the upcoming username ‘land rush’. With the growing number of user-generated social-networking websites such as Facebook, MySpace and Twitter, online trade mark protection is becoming increasingly complicated by the myriad ways in which marks and identities may be misused. Facebook’s pre-emptive approach to protecting trade mark rights provides increased certainty to rights holders and a more effective way to ensure that intellectual property disputes are resolved fairly.

How to protect your trade mark on Facebook

If you are the owner of a registered trade mark, you can do three things to protect your trade mark:

• notify Facebook of the mark by completing the online form with details of your company name, registered mark and registration number

• if your company already has a Facebook account, you may wish to claim the relevant mark for its username on Saturday 13 June, and

• proactively monitor Facebook for any usernames that may infringe your trade mark, and requesting removal of any offending accounts using the online “Notice of Intellectual Property Infringement (Non-Copyright Claim)” form available here.

A separate form must be completed for each registered mark. Rights holders do not need to have a Facebook account to lodge a prevention notice, and there is no application fee for submitting a prevention notice to the system.

In addition to implementing the trademark protection scheme, Facebook has taken a number of other steps to avoid opportunistic registrations:

• blocking well-known business names and generic names from being registered

• limiting usernames to users who joined Facebook before the URL plan was announced, and

• reserving the right to remove and reclaim any username at any time for any reason.

Further information about usernames

A username:

• must be as close as possible to a user’s true name, rather than a nickname or abbreviation

• can only contain alphanumeric characters or a period

• cannot be changed once selected

• is not transferable, and

• must comply with Facebook’s Statement of Rights and Responsibilities.

Usernames will be used to access and identify members’ profiles in place of the series of numbers currently used to identify user accounts. The new system will make profiles more readily accessible to other people and to search engines.