The following article was created by Dickinson-Wright, A statewide firm specializing in corporate and business law.
Source: Brandmarking Vol. 1, No. 7
Thoughts on the Creation, Protection, and Enforcement of Brand Identity
Sooner or later someone in your organization is going to get an e-mail that looks something like this:
Dear CEO/Principal,
We are the department of registration service in China. we have something need to confirm with you. We formally received an application. One company which called “XYZ Investment Limited”.are applying to register “[yourtrademark]” as net brand and some CN domain names. After our initial examination, we found that the net brand applied for registration are as same as your company’s name and trademark. If your company has not authorized the aforesaid company to register these, Please contact us as soon as possible.In addition, we hereby affirm that our time limit for dissent application is 7 days. If your company files no dissent within the time limit, we will unconditionally approve the application submitted by “XYZ Investment Limited.”
As is usually the case, the sender of the message reproduced above (with some elements changed) was not an official agency at all, just a domain name registrar trying to scare one of my clients into spending too much money on obscure domain names the client didn’t need. It looks like a classic protection racket: “Pay us to spare you the calamity we will otherwise bring down upon you.” The threat is probably hollow — the alleged infringer (“XYZ Investment Limited”) is likely a complete fabrication, not someone who actually wants to register your trademark as a domain name — but I’ve had several clients become alarmed by messages like this.
The giveaway is the reference to the sender’s “initial examination” of the third-party application, and the “discovery” of my client’s trademark rights. Domain name registrars do not – repeat, do not – investigate anyone’s trademark rights. Applying for a domain name is a purely automated process. If the particular string of letters and numbers you want for isn’t taken, it’s yours – whether it infringes someone else’s trademark or not.
When you get an e-mail like this, ask yourself whether you really need any domain names with the China national suffix (“.cn”). You probably don’t: Dot-com web sites are readily accessible in China, which like all other countries in the world uses the “.com” suffix more than another. And “.cn” domain names are actually quite complicated and expensive to obtain.
Of course, if you actually do have reason to pursue a “.cn” domain name, ask your trademark attorney to put you in touch with a reputable agent in China.
This is only one of a number of trademark scams that make the rounds from time to time. We’ll discuss others in future issues of Brandmarking.
About the Author – John Blattner
I’m an attorney who helps businesses develop and protect brand identities. I do trademark counseling, clearance, prosecution, enforcement, and litigation, in the fashion, health and beauty, financial services, technology, retailing, publishing and media, automotive, sporting goods, and other industries. I also teach Trademarks and Unfair Competition at Michigan State University College of Law.
I work at Dickinson Wright PLLC, a general practice law firm with offices in Washington, D.C., Nashville, Las Vegas, Phoenix, Toronto, Columbus, and throughout Michigan. Please note, however, that I am solely responsible for all content of this e-mail. Any views or opinions expressed are mine, and do not necessarily reflect the views or opinions of my law firm.