Facebook offering second chance to protect trademarks: firms should monitor social networking sites.(LAW)

Minutes past the stroke of midnight June 13, millions of Facebook users rushed to claim unique Web addresses that identify them by name.

A few local businesses, and individuals among them, quickly claimed their so-called vanity URLs on the world's largest social networking site. Facebook allowed users to select one unique name, such as www.facebook.com/qualcomm, as it did away with arbitrary numbers to make finding profiles easier.

For businesses, the move also came with legal implications. Owners rushed to the scene in order to protect their trademarked names from cyber squatters, or users who sign up for names just to prevent someone else from having them.

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"A year ago, rights owners really just needed to police the federal trademark register," said Lisa Martens, a trademark attorney in the Carmel Valley office of Fish & Richardson. "Now, they have to go into these social networking sites. It's one more area brand holders need to monitor to protect their trademarks online."

Palo Alto-based Facebook, which claims 200 million registered users worldwide and 900 employees, said it encouraged those who held intellectual property rights to their names to contact the site to reserve or protect them. Since the initial launch, however, Facebook has changed its policy to allow one-time name changes. There's no deadline to make a change.

If individuals or business owners come forward claiming rights to their name, Facebook will enforce it and allow the original applicant to choose another name.

"On our end, we wanted to do it right where there wouldn't be any legal implications," said Facebook spokeswoman Kathleen Loughlin.

Loughlin said she could not comment on how many changes it has made since then.

No Worries

For some local operations, establishing a name for themselves came without issue.

SeaWorld San Diego spokesman Dave Koontz said the tourist attraction didn't have to worry about establishing its name in the wee hours of the morning. Facebook had provided it a user name when SeaWorld set up its San Diego site in April.

In an effort to protect some well-known trademarks, Facebook established a list of names before launching the registration, Loughlin said.

"That was by no means comprehensive," she said. "We tried to do the best we could."

In the future, Martens said she expects rights holders will have to take extra steps in monitoring social networking sites such as Facebook, Twitter and MySpace.

"The Facebook policy comes out as a snapshot in this moment, in this time," Martens said. "As new trademarks come out, this is going to be one more area companies are going to want to preregister and protect their name."

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