Policing Trademarks as they Appear Online and On Social Media

In addition to taking proactive measures to protect and preserve the use of your trademarks on social media, it is also very important to police improper use or infringement of your mark by others if and when it does occur. Social media provides cybersquatters, impersonators, competitors, and sometimes even your own affiliates many opportunities to infringe upon your trademarks. It is important to monitor or “police” the use of your marks online to prevent others from damaging the goodwill inherent in your trademarks and to prevent your trademarks from becoming diluted or generic, which happens when use of a particular term becomes widespread. Several companies provide monitoring services and will alert you of new uses of your marks. Setting up an alert through Google News Alert is another way to monitor usage.

When you see an infringing use of your mark, there are a variety of options you can pursue to stop the infringement. Before you take any action, however, it is prudent to consult an attorney. There is some risk in taking action, because if the “infringer” turns out to have been using the mark longer than you, calling attention to the situation may cause the other party to take action against you. Once you and your counsel are satisfied that your use is “superior” to the infringer’s (i.e., you have been using the mark longer for the same or similar goods and services in the same
territory), consider taking one or more of the following steps:

Send a Cease and Desist Notice

A simple and cost-effective first step is to send the infringer a letter identifying yourself as the owner of the mark, explaining how long you have used the mark, and requesting that the other user cease infringing upon the mark. Many companies choose to keep the tone of the initial letter friendly for two reasons: to encourage complianc eand to maintain a positive brand image should the infringer decide to post the letter online. It is useful to send the letter via certified mail or some other method that includes tracking. Documenting the fact that an infringer has received the letter may be important later if the infringer does not cooperate.

Have Outside Counsel Send a Cease and Desist Notice

Some companies choose to skip sending their own letters and have outside counsel handle it directly. Others prefer to send a first letter and then have outside counsel send a follow up. Often having the demand to cease infringing arrive on legal letterhead is enough to cause the infringer to stop.

Follow the Platform’s Complaint Procedures

All of the major social media platforms have procedures in place to remove infringing content posted on their sites. Searching for the name of the platform and the word “complaint” in a search engine usually leads to easy locating of the page to report infringement. Typically the complaint form requires the complainant to enter information related to the marks, the name and address of the complainant, and a link to the infringing content. Having a registered trademark improves the odds of success. While there is no guarantee of getting the infringing content removed, filing a complaint often results in removal, and the platforms usually respond quite quickly.

Civil Litigation

When all else fails, filing a complaint in federal court is an option for trademark owners whose rights are being violated. An attorney will advise you about the cost, risk, and benefits of such a step, as well as the evidence you will need to produce in order to improve your chances of success in court.

Additional Options to Address Cybersquatting

The term “cybersquatter” is used to describe a person who registers a trademark as a domain name and then offers to sell it to the trademark owner. Cybersquatters may register a company’s trademark in one or more generic top-level domains (gTLDs), which are the suffixes of domain names (e.g. com, edu, org, info). For example, a company might own the domain for its trademark in the .com gTLD and a squatter might go out and purchase the same mark in the .org gTLD in the hopes that he or she can resell the domain to the mark owner at an increased price. Squatters may also engage in “typosquatting” by registering domains that are misspelled, or they may add a word to the beginning or end of the mark.

The Internet Coporation for Assigned Names and Numbers (ICANN) has set up a system for trademark owners to file complaints about cybersquatters. It involves filing what is known as a Uniform Domain-Name Dispute-Resolution (UDRP) complaint with the World Intellectual Property Organization (WIPO) or the National Arbitration Forum. The complainant must show that it has ownership of the mark, and it must also demonstrate bad faith use of the mark by the infringer. The infringer has a chance to respond. Finally, an arbitration panel of one to three arbitrators decides who has rightful ownership of the mark and may order that the domain be transferred to the Complainant if all the elements of a UDRP action are proved. The arbitrator’s decision is given deference by ICANN, and if he or she decides that a respondent is using the mark in the domain name in bad faith, he or she may order the internet service provider to transfer access to the account. UDRP cases may be a good method for controlling costs where you believe you have a strong case to make as to the other party’s use of your marks. Of course, a qualified attorney can help you assess the likelihood of success.

The introduction of new generic top-level domain names by ICANN will add additional complexity to the policing of trademarks on the internet and on social media. While the program is still in its early stages, thousands of new gTLDs are anticipated to emerge in coming years, requiring heightened awareness of trademark owners to the use of their marks online and in domain names in particular. ICANN’s Trademark Clearinghouse database is one option for trademark owners to use, allowing for defensive registration of key marks in certain domains, and/or active monitoring for cybersquatters or infringers. The Uniform Rapid Suspension (URS) system will also assist trademark owners in settling trademark disputes related to gTLDs.

LaRussa v. Twitter

In 2009 Tony LaRussa the manager of the St. Louis Cardinals sued Twitter over a fake account and allowing an impostor to register the domain name twitter.com/Tony LaRussa along with use of an unauthorized photo of Tony. Tweets were posted in his name that referred to team-related incidents including the death of a pitcher and LaRussa’ DUI arrest. In his complaint against Twitter, LaRussa alleged trademark infringement and dilution, claiming that these unauthorized tweets from this handle damaged the LaRussa trademark. The case settled, and LaRusssa now appears to own the @TonyLaRussa handle. Twitter deleted the fake account the same day the lawsuit was filed.

Twitter now protects celebrities with a verification policy that authenticates the identity of public figures and attaches a blue check-mark next to the profile on a verified account. Facebook has adopted a similar policy. California has a law that makes online impersonation a crime [Cal. Penal Code § 528.5]. Falsely sending out Twitter messages that purport to be from a celebrity or falsely creating a Facebook page under the name of another person to embarrass them would subject the impersonator to criminal and civil liability.

CREDIT: The content of this post has been copied or adopted from the Minnesota Department of Employment and Economic Development’s “A Legal Guide to the Use of Social Media in the Workplace” Guidebook