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Trademarks and Social Networking

By Andrew J. Ferren
December 2009
People: Andrew J. Ferren, Karin K. Rivard

Many companies and organizations have begun to use social networks as a means of marketing their products and services and getting found on the Internet.  Savvy marketing personnel have discovered ways to promote their causes via Twitter, Facebook, and similar services.  Those adopting the new technology include for-profit businesses trying to attract customers and non-profits seeking a convenient, low-cost means of advocating positions and attracting donors.

User Names

A threshold decision to get up and running is the selection of one or more user names.  A user name serves partly as an address and partly as an element of branding.  In this respect, a user name on a social network is analogous to a domain name for a web site.  For some organizations, it can be valuable to register user names that match brand names, whether to promote goods, services, or causes via those user names or at least to prevent others from adopting the same names and causing confusion in the marketplace.  As in the case of domain names, however, latecomers often discover that someone else has already registered a user name that is identical or confusingly similar to the desired name.

Trademark Rights

Trademark rights generally receive protection on the Internet as well as in other media.  As some brand owners have discovered, however, it can be much more difficult to challenge user name abuse than to challenge bad faith use and registration of domain names.  In the case of domain names, senior trademark rights can be asserted in a relatively efficient and cost-effective arbitration proceeding under the Uniform Domain Name Dispute Resolution Policy.  In the case of user names on social networks, however, there is no single clearinghouse for dispute resolution.  Rather, a brand owner must invoke the intellectual property policies of the individual services and hope to get timely relief.  Unfortunately, the results are unpredictable.

Twitter, for example, requires users to comply with its Terms of Service, Twitter Rules, and Trademark Policy.  Together, these policies forbid name squatting, sales of user names, and intentional business impersonation.  But Twitter appears to allow accounts that are not used for financial gain and are unlikely to mislead or confuse others.  Therefore, brand owners will not always have a basis to challenge Twitter user names under Twitter’s own policies.  Moreover, at present, Twitter does not appear to have adequate staff and resources to deal with complaints.  In some cases, such as when someone tried to impersonate baseball manager Tony LaRussa, aggrieved parties have had to resort to filing a complaint in court to get Twitter’s attention and obtain prompt relief.

Facebook policies include a Statement of Rights and Responsibilities and an online Notice of Intellectual Property Infringement (Non-Copyright Claim) that brand owners can use to report trademark infringement.  The terms generally proscribe any use of Facebook for unlawful or misleading purposes, including any use that infringes or violates someone else’s rights.  In addition, Facebook expressly reserves the right to remove or reclaim a user name if Facebook believes it appropriate to do so (such as when a trademark owner complains about a user name that does not closely relate to the user’s actual name).  Still, a trademark owner cannot assume that the mere registration of a user name that matches or is confusingly similar to the trademark owner’s name will necessarily infringe the owner’s trademark rights and ensure a favorable response from Facebook.

Trademark Enforcement

One significant problem with enforcing trademark rights on social networks is the territorial limitations of a brand owner’s rights.  Social networks have a worldwide reach, but a trademark owner’s rights typically stop at the borders of the jurisdictions in which the owner has registered or otherwise established its rights.  Thus, for example, a party in Europe might innocently adopt a user name that matches the company name or brand of a U.S. business, and the U.S. business might have no recourse.  The registrant of the user name may have no followers or other activities in the U.S., and the U.S. business may have no activities in the relevant European market.  The problem is compounded on networks such as Twitter that allow anonymous user names, as it may not be possible to tell where the registrant is located and whether the trademark owner has a legitimate infringement claim.

Brand Protection

What is a brand owner to do to protect itself?  The easiest and most cost-effective approach is to pursue registration of appropriate user names on major social networks sooner rather than later so as to avoid unpleasant surprises in the future.  Since inactive user names may become vulnerable to suspension or removal on services such as Twitter, it would be a good idea to maintain at least a token presence and periodically update the account with new information.

Whether or not a brand owner desires to use particular social networking sites for its own marketing purposes, such as brand awareness campaigns or engaging customers and clients in dialogue, the brand owner should be aware of the risks presented by these sites and take steps to protect its brands in these new media.  A proactive brand owner should consider taking the following steps:

  1. Make sure the organization’s most important brands have been registered as trademarks and domain names in the most important jurisdictions;
  2. Register those most important brands as usernames on key social networking sites;
  3. Monitor those social networking sites to detect username registrations and other unauthorized uses of the organization’s brands, including sales of counterfeit merchandise;
  4. Report alleged infringements, false advertising, unfair competition, and other abuses to the social networking sites in accordance with posted terms of service and intellectual property policies;
  5. File complaints in applicable courts if timely relief cannot be obtained from the social networking sites or from those alleged to be violating the brand owner’s rights.

Conclusion

The bottom line is that social networks are not going away any time soon.  Therefore, organizations need to stay up to speed on these media and be proactive to protect their brands and other valuable intellectual property.  As in many such situations, early action can avoid expensive, protracted, and potentially fruitless enforcement efforts.

For questions about the information contained in this advisory, please contact:

Andrew J. Ferren
(617) 574.3546
aferren@goulstonstorrs.com

Karin K. Rivard
(617) 574.4035
krivard@goulstonstorrs.com

This G&S advisory was authored by Andrew J. Ferren, a Director in the firm's Intellectual Property group.

This information should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general informational purposes only, and you are urged to consult your own lawyer concerning your situation and any specific legal questions you may have.

Pursuant to IRS Circular 230, please be advised that, this communication is not intended to be, was not written to be and cannot be used by any taxpayer for the purpose of (i) avoiding penalties under U.S. federal tax law or (ii) promoting, marketing or recommending to another taxpayer any transaction or matter addressed herein.

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