Social media’s importance to a business’ branding and trademark strategy cannot be understated. With around 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?
It is important to realize not all types of trademark usage are considered the same. Trademark usage on social media roughly falls into three categories:
- Fan or Gripe-These are accounts created with the intent to either praise or criticize your brand
- Passing Off-These are accounts attempting to impersonate or claim an associate with your business that does not exist
- 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. Two examples from popular websites are Facebook permits its users to “comment on or criticize [a company’s] goods or services” and Twitter similarly allows “parody, newsfeed, commentary, and fan accounts.”
‘Passing Off’ and ‘Counterfeit’ accounts are almost universally prohibited by the major social media sites at the time of this writing. Upon receiving notification from the rightsholder, mechanisms exists for resolving trademark infringement. Remedies commonly include deleting the offending account, requiring the user to change its name or profile, and removing or modification of the infringing content.
Some limits to using these remedies still exist for the majority of social media sites:
- The use must be infringing-Trademarks are limited by factors such as the country registered and the goods/services the mark is used in connection with. A United States trademark XYZ for toothbrushes will not be able to enforce against another XYZ for toothbrushes in a country other than the United States. A XYZ trademark for an unrelated good like computer software would also not be actionable.
- A trademark registration may be required-Some social media websites require a formalized trademark registration certificate be entered into evidence. This could be a significant detriment to your enforcement as an average trademark registration in most countries takes at least a year to complete.
- The enforcement likely requires the rightsholder (or its attorney) to act on its behalf-When your trademark rights are based upon a license or other arrangement without full ownership of the mark you may be prevented from pursuing any action without permission from the trademark’s owner.
- Whether or not any resolution occurs is usually at the ‘discretion’ of the social media website-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 face of all of this there are several things you can do and keep in mind:
- 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.
- 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.
- 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 RM Partners Law 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 RM Partners Law for advice about your specific international trademark protection and strategy. Attorneys at RM Partners Law are also available to assist in reviewing other matters related issues to branding, licensing, copyrights, social media disputes, or website addresses. d Table 4