How Curity protects its brand using trademarks and domain names

Case Study: How Curity® Protects its Brand Using Trademarks and Domain Names

By Travis Spencer, CEO, Curity

Building a moat of protection around your brand is time-consuming and expensive. Not doing so, however, can be even more costly. Without proper protections, for instance, you may find yourself facing an identically named company doing something similar with no way of stopping them. For these reasons, it’s important to have a well-formed plan on how to dig the trench as deep and wide as possible while expending the least amount of resources. To help you form such a strategy, I’ll describe in this post how Curity is digging a ditch around its brand.

Our approach revolves around three activities:

  1.     Registrations
  2.     Monitoring
  3.     Enforcement / Prosecution

To have an effective moat, all three are needed.

These activities manifest themselves in multiple ways but revolve around a few types of assets:

  1.     Trademarks
  2.     Domain names
  3.     Social media[1]

If you are not performing all three activities for each of these asset categories, your brand is exposed, and you should consider it a matter of time before someone begins doing something similar to you with a similar name. At that time, it may not be possible to stop them; even if it is, it will cost you several orders of magnitude more than it would to have to prevent them in the first place.

[1] In this article, I will not go into social media brand protection but hope that the discussion below will help you formulate a holistic plan to protect your brand on all fronts. 

Trademarks, a Primary Defense

Trademarks are essential intellectual property (IP) for any brand. Commonly though, organizations register too few. We initially made this mistake at Curity; we simply registered our logo and name in one class in the EU and the US, thinking that would suffice. Learning it would not, we sought to better protect our corporate identity and guard the brand we established through the delivery of top-notch cybersecurity solutions. We did this in part by expanding our trademark strategy to also include trademark registrations:

  • In the UK, Norway, Iceland, Switzerland, and Turkey, which you may think of as part of Europe but are not covered by an EU regional trademark;
  • In other markets that we are expanding to or can foresee ourselves expanding to in the short- to medium-term;
  • Of our logo in multiple colors because various jurisdictions consider color differently;
  • In additional NICE classes; and
  • With other descriptions of our goods and services.

We have also registered additional marks and logos that we use in our business (e.g., Curity Healthcare Solutions™ and Curity Technology Solutions™). These activities have resulted in a portfolio of more than 50 marks in dozens of countries, deepening our moat substantially.

An even more common mistake that up-and-coming brands make vis-à-vis- trademarks is to register them and forget about them. This can be a fatal mistake that may result in the concurrent presence of an identically-named brand in an adjacent or only slightly different market.

You must avoid this situation by monitoring your marks and enforcing your registered rights.

Keeping an eye on your marks is done using a monitoring service. This service regularly checks applications to register marks like yours in certain jurisdictions and categories (i.e., NICE classes). When matches are found, you can use your advanced notice to oppose these applications. If you prevail and block them, they will not be able to use that name or logo to do business. This will help ensure that your brand is strong and that the market is able to find you without being confused by new entrants.

For large brands, monitoring is a significant undertaking that quickly segues into enforcement, so I’d recommend working with your trademark attorneys’ preferred monitoring service. 101domain also offers monitoring services, which seem good.  For startups who don’t yet have trademark lawyers, I recommend Digip because they provide assistance with trademark registration without requiring extensive resources; I have not used them firsthand but have evaluated them. While it was not a good fit for Curity, it is a great starting point, and after facing their lawyers on the opposing side of a prosecution, I can say that they are sharp! Whichever service you use is fine if it works for you and you utilize the results.

Unlike domain names, covered below, trademarks must be used. If you don’t, you’ll lose them! So, part of protecting them is to utilize them. To prove usage, we keep a dossier showing when and where we’ve used our marks in commerce. This file includes photos of marketing events, samples of merchandise, screenshots of web pages, etc. This documentation also helps when it comes time to renew our marks.

As mentioned above, you also need to enforce the rights you have in your trademark. If you’re not ready to go to court to protect them, why bother registering them in the first place? Enforcement doesn’t usually start with court proceedings, thankfully. Instead, a Cease-and-Desist letter (C&D) is the most common first step. In some cases, the counterparty will simply comply (e.g., by rebranding, going out of business, abandoning the disputed IP, etc.). Any sizable company, though, will most likely fight. In such a case, your best outcome is probably a draw where both brands coexist. Initially, I viewed every one of these compromises as a loss, weakening our brand. As a mediator once told me though: By reaching a mutual agreement, you control your outcome, whereas taking the issue to court leaves your fate in the hands of a judge or jury; coexisting avoids a total loss. This advice is important to keep in mind; in such situations, you’re fighting to limit your losses, not to conquer. Trying to vanquish the interloper will probably only get you a more expensive draw. Be pragmatic and unemotional – which is easier said than done, I know.

From this short write-up, I hope you can see that trademarks are important. There’s more to say about using them to prevent company registrations, localizing them into other alphabets like Arabic, capitalizing them on your balance sheet, and much more. For this article, though, I want to use the remaining words to talk about another important type of IP you need in order to protect your brand: domain names.

Domain Names, the Arrows in a Brand’s Quiver

If trademarks are the big catapults utilized sparingly, domain names are little arrows used frequently. Trademarks are expensive to register, relative to most domain names, and very expensive to enforce. You also need to use the marks in trade, so registering ones you don’t intend to use won’t protect your branch much. With domains, it’s the opposite. Domain names are cheap to register, relatively inexpensive to enforce, and don’t have to be used. The last point makes domains an important defensive weapon for brand protection and is why Curity has registered almost 150 of them.

To see why I say this, imagine what a would-be competitor does after inventing a better mousetrap. They concoct a company name and check if the .COM domain name is available. There aren’t many short .COM domains available these days, so your new competitor might use a domain name generation tool like to discover available domains in cool new domain name extensions, like .AI or .IO. With a growing number of generic extensions available, it is hard to anticipate what will tickle their fancy. You can, however, register domains similar to your own, forcing competitors to choose a dissimilar name. This won’t stop the masses from beating a path to their door if their mousetrap really is better, but the hoi polloi won’t confuse them for you, saving you from having to take more expensive actions.

That was a key point, so stop skimming and read that part carefully!

 In other words, a competitor that cannot register a domain name like yours will be forced to use a dissimilar brand name. They will, thus, not attempt to register similar trademarks. This will prevent any of the goodwill you have established in your own brand from benefiting them. It will also avoid confusion, which you’d have to seek relief from. In such a case, you may ultimately have to coexist with them – which is not unlikely if they are established before waylaid. This is an unfortunate state of affairs that would have been avoided if not for their unfortunate name selection.

Because their selection most likely hinged on the availability of a domain name, preemptive domain name blocking is critical.

 The biggest issue with domain names though is that there are infinitely many. Characters can be combined in numerous ways, and there are literally hundreds of domain name extensions. This makes it very hard to prevent every option from being registered.

To block as many domain names as possible, you need to be strategic. I would suggest the following:

  •  Use GlobalBlock+ to prevent as many possible domain names like yours from being registered in as many domain name extensions as possible.
  • Register your trademarked brand name with the Trademark Clearinghouse (TMCH), allowing you register your brand name in any new domain name extension before anyone else can.
  • Register your brand name and similar names with every domain name extension that is not covered by GlobalBlock which is potentially salient to your business.

If you do these things, there is a much lower chance that a competitor will start building their brand with a name like yours. It does happen, so you need to also monitor and enforce your band in the domain name space, just as in the trademark realm.

We use the domain monitoring service from 101domain. This provides us with regular reports about domain names like ours that have been registered, expired, etc. A few months after signing up for this service, 101domain also sent us a giant domain availability report about all the domains we could register. We use all of these reports to find domains that we should acquire. They alert us to cybersquatters too, which is surprisingly common. They also tip us off to interlopers entering the market with a similar name, often prior to them registering trademarks. This early warning system helps us take swift action using our trademarks to stop the impostor.

Domain name enforcement actions can start with a C&D. In that, you usually offer to buy the domains for some amount and hope it stops there. If it doesn’t though, you probably have to escalate. That involves the invocation of the Uniform Domain-Name Dispute-Resolution Policy (UDRP).  Initially, this isn’t as serious as prosecuting in court, but that’s where it could end up. Taking such measures may seem extreme to the unfamiliar but, in my opinion, is absolutely necessary for any organization that is serious about building a well-known brand.

Final Thoughts

I hope that this writeup has helped you see how you can use trademarks and domains to build a moat of protection around your brand. The activities described in this write-up are important, in my judgment, for any company. Ignoring them when you’re small only invites trouble. For this reason, you should plan to progressively expand these protections over time. Registering a few domains and trademarks, procuring a monitoring service, and doing small enforcement activities (e.g., domain name takedowns) is a great start. Regularly review this activity and scale it up as you grow. If you don’t, I’m afraid you will either spend more money later or end up with a weak brand.

[DISCLAIMER: I am not a lawyer, and nothing in this article should be construed to be legal advice. For that, please consult an actual trademark lawyer. If you need one, I wholeheartedly recommend Delfina Homen of Miller Nash and Maria Winckler of Delphi.]