Social media’s importance to the branding and trademark strategy of a business cannot be understated. With over eighty percent of North Americans utilizing social media (See: https://www.statista.com/statistics/273476/percentage-of-us-population-with-a-social-network-profile/) a business’ access to it can be critical to success. So, what can you do if you discover another party is using your trademarks on social media?
First, not all types of trademark usage are considered the same. Trademark usage on social media roughly falls into three categories:
1) Fan or Gripe-These are accounts created with the intent to either praise or criticize your brand
2) Passing Off-These are accounts attempting to impersonate or claim an association with your business that does not exist
3) Counterfeits-These are accounts displaying counterfeit versions of your goods and services
Social media websites, to varying degrees, permit ‘Fan or Gripe’ accounts so long as it is made clear the trademark holder is not involved. For example, Facebook permits its users to “comment on or criticize [a company’s] goods or services” and Twitter allows “parody, newsfeed, commentary, and fan accounts”.
Currently, ‘Passing Off’ and ‘Counterfeit’ accounts are almost universally prohibited by the major social media sites. Upon receiving notification from the rights holder, these sites have mechanisms for resolving trademark infringement. These remedies may include deleting the offending account, requiring the user to change its name or profile, and removing or modifying the infringing content.
However, your ability to use these remedies may be limited. Most social media sites have some or all of the following requirements:
1) The use must be infringing-Trademarks are limited by factors such as the country of registration and the specific goods/services associated with the registered mark. The holder of United States trademark XYZ for toothbrushes will not be able to enforce its rights against a toothbrush brand in Slovenia. Similarly, the XYZ trademark for toothbrushes would not bar an XYZ trademark for software products.
2) A trademark registration may be required-Some social media websites require a formalized trademark registration certificate be entered into evidence. This condition could be a significant detriment to a business that has not taken steps to register its marks. An average trademark registration in most countries takes at least a year.
3) The enforcement likely requires the rights holder (or its attorney) to act on its behalf-When your trademark rights are based upon a license or other similar arrangement you may be prevented from pursuing any action without permission from the trademark’s owner.
4) The ‘discretion’ of the social media website may be invoked-The information collected by social media websites to process trademark infringement claims is paltry: name, address, trademark and registration numbers, short description of why the use is infringing. This lack of information, unfamiliarity with specific industries, financial motives for permitting the other account to continue, and a host of other reasons could lead to incorrect or skewed decision compared to those a court of law would find.
In the light of these requirements, a business should implement the following procedures:
1) Apply for trademark registration immediately-Trademark applications can take years to mature into registrations. Getting started on the application process before goods/services are sold with the trademark will help your enforcement efforts.
2) Check site policies regularly. Policies are subject to change at any time-The landscape of social media and trademarks is an ever-moving target. Reviewing a few trademark policies a few times a year may help keep you updated as to new requirements to file claims.
3) Explore all remedies – not just those of the site. The mechanisms given by social media are largely voluntary-Regardless of what mechanisms exist with the social media websites all formal judicial and administrative remedies (including a lawsuit) are still available.
An attorney at Roberts McGivney Zagotta LLC is available to assist in reviewing the specifics of your trademarks, branding, or social media disputes.
The information in this article is for informational purposes only and does not constitute formal, legal advice. Consult with one of the attorneys from Roberts McGivney Zagotta LLC for advice about your particular circumstance.