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Establishment and Enforcement of Brands in Social Media Caroline Mead Beth Seals January 28, 2014
Establishment and Enforcement of Brands in Social Media
Caroline Mead Beth Seals
January 28, 2014
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“Brands” – Trademarks and Service Marks
• WHAT is a trademark?
• What goes into SELECTING a strong trademark;
• And how do you PROTECT it?
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What is a Trademark?
• Words (Santen, Quixin, Alamast)• Names (Liz Claiborne)• Phrases (“Fly the Friendly Skies”)• Symbols (Logos)• Designs (Coca-Cola bottle)• Any combination of the above
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• Identify and distinguish goods from those manufactured by others, and
• To indicate the source of the goods, even if that source is unknown.Example: The mark ZEST for soap indicates that the bar of soap comes from the same source as the last bar of ZEST bought. It does not matter whether the consumer knows the name of the manufacturer.
Trademarks are used to:
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What is a Service Mark?
Service marks are the same thing as trademarks except that they identify and distinguish services instead of products.
NORDSTROM (Retail store services)
McDONALD’S (Restaurant services)
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The Birth of a Brand
• Creating a distinctive mark
• Is the .com available?
• Clearance searches
• Registration
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Distinctiveness
Marks must be distinctive:• The trademark law only protects distinctive marks.• Arbitrary/fanciful and suggestive marks are deemed to be
inherently distinctive.• Descriptive marks and surnames are not inherently distinctive
and can only be protected if they can be shown to have attained distinctiveness through use (referred to as “secondary meaning”).
• Generic terms are unprotectable and can never function as a trademark. Once a word becomes generic, it is lost for trademark purposes.
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Distinctiveness
ArbitraryArbitrary mark uses words that are in common use but bear no relationship to the associated goods.• APPLE for computers• IVORY for soapFancifulA fanciful mark is composed of coined words.• XEROX for photocopiers• KODAK for film• POLAROID for instant photo cameras
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Distinctiveness
SuggestiveA suggestive mark suggests some quality or character of the associated goods, but not so explicitly that no imagination is needed to determine the nature of the goods.
Examples:• GREYHOUND for bus services.• UNCOLA for a non-cola soft drink.
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Distinctiveness
DescriptiveA descriptive marks are those that describe the qualities, ingredients or characteristics of the products or the services that the marks are used.
Examples:• LITE BEER for low calorie beer• SWEET AND CHEWY for caramel
A descriptive mark is not registrable unless it can be shown that consumers have leaned to associate it with a single source. This leaned association is called “acquired distinctiveness” or “secondary meaning.”
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Distinctiveness
SurnamesSurnames are family names.
Examples:• HONDA• GALLO
A surname is unregistrable unless it can be shown that consumers have leaned to associate it with a single source. This learned association is called “acquired distinctiveness” or “secondary meaning.”
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Distinctiveness
Geographic names Example:• Bank of America
A geographic name is unregistrable unless it can be shown that consumers have learned to associate it with a single source. This learned association is called “acquired distinctiveness” or “secondary meaning.”
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Distinctiveness
GenericA generic term is a common group or class name, such as “beer”, “shoes”, automobile” to which a particular product belongs. A generic term can never be a trademark for the identified goods.
Examples:• APPLE for apples• Mikan (“orange”) Juice for orange juice
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Is the mark available?
• Preliminary Searches
• Full Searches
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Infringement
Likelihood of Confusion:• The test for trademark infringement is whether the simultaneous
use of two marks is likely to cause confusion among consumersregarding the source or sponsorship of the goods or services associated with the marks.
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• Marks may be examined to see if they:look the same;sound the same; or have the same meaning
• Any one of these elements may be sufficient to establish infringement.
• Other factors also are taken into consideration
Sight, Sound and Meaning Trilogy
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CHEZ MOISI SENIO
CHEZ LUISENORITA
Examples of Marks held Similar in Appearance
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ARROWDATSUNNEVA-WETLISTERENE
AIR-ODOTSONNEVER WETLISTOGEN
Examples of Marks held Similar in Sound
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COCA COLAHOUR AFTER HOURWIZZ
COCO LOCOSHOWER TO SHOWERGEE WHIZ
Examples of Marks held Dissimilar in Sound
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CYCLONE fencing TORNADO fencing
Examples of Marks held Similar in Meaning
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• In the United States, under federal law, the first to use a mark “in commerce” generally is the owner of the mark, and may prevent junior users from using the mark for similar goods or services.
• But if you file based on “intent to use,” you generally would have rights over a later user.
First to Use vs. First to File
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• Even though registration is not required for trademark protection, it is advisable for a company to obtain registrations for its Trademarks.
• Registration confers important benefits to the Trademark owner:Automatic Federal Court JurisdictionPossibility of treble damages for infringementPresumption that Registrant is owner of markGeographic coverage for entire United States even if use is limited to localized areas“Incontestability” after five years upon filing of affidavit between fifth and sixth years
Registration Recommended
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Establish your brand in social media
Over a billion users
Facebook is on 3 of 4 smart phones
More than half of people on Facebook visit everyday
230 million active users
500 million Tweets per day
Nearly every country, more than 35 languages
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Username squatters
• Many social media sites allow users to register usernames as the URL for the user’s personal page
facebook.com/username twitter.com/username
• These usernames can be trademarks and are generally “first-come first-served” without any proof of ownership
• As a result, mark owners looking to create a presence on social media sites may find “squatters”
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How do you deal with squatters?
• US law and UDRP proceedings focus on infringement of second-level domain names
facebook.com/username twitter.com/username
• Social media platforms assign usernames, not second-level domain names
facebook.com/usernametwitter.com/username
• Result: resort to trademark law
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What can you do?
• Register your mark as a username - create your presence first!
• Monitor social media sites for trademark abuse in house or vendor (i.e. Thomson)
• Informally (and politely?) reach out to infringersCould be a loyal fan / customerYour cease and desist letter could be publicizedTwitter: followers and past tweets will follow to new accountBut don’t offer money before checking platform rules! (Twitter)
• Take advantage of social media platform policies and procedures
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Social Media Trademark Policies
“You will not post content or take any action on Facebook that infringes or violates someone else's rights or otherwise violates the law… If you repeatedly infringe other people's intellectual property rights, we will disable your account when appropriate.”
“Using a company or business name, logo, or other trademark-protected materials in a manner that may mislead or confuse others with regard to its brand or business affiliation may be considered a trademark policy violation.”
“We reserve the right to reclaim usernames on behalf of businesses or individuals that hold legal claim or trademark on those usernames. Accounts using business names and/or logos to mislead others may be permanently suspended.”
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Facebook Trademark Infringement Claim
• Your contact information.
• The mark, including registration no., country, goods/services.
• URL to the allegedly infringing content.
• A description of how you believe the content infringes
• A declaration (good faith belief that use is not authorized, information in your notice is accurate, and you are the owner or authorized to act on behalf of the owner of the trademark)
• Electronic signature or physical signature
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Facebook Reaction
• Facebook may remove infringing content and send a notice to the alleged infringer, including contact information of trademark owner
• Alleged infringer can follow-up directly with trademark owner if he or she does not believe content is infringing (Facebook does not resolve disputes)
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Twitter Trademark Infringement Claim
• Your contact information.
• The mark, including registration no., country, link to record.
• Identification of allegedly infringing account.
• A description of confusion with your trademark
• If not the trademark owner, documentary evidence that you have authority to act on the trademark owner's behalf (i.e., agent's agreement, power of attorney, etc.) via fax
• Requested Action (e.g., removal of violating account or transfer of trademarked username to an existing company account)
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Twitter Reaction
• “When there is a clear intent to mislead others through the unauthorized use of a trademark…”
Twitter will suspend the account and notify the account holder
• “When we determine that an account appears to be confusing users, but is not purposefully passing itself off as the trademarked good or service…”
account holder will be notified and given an opportunity to clear up any potential confusion
• “Using another's trademark in a way that has nothing to do with the product or service for which the trademark was granted is not a violation of Twitter's trademark policy.”
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Facebook Community Pages
• The Community Page label is a way to show that your Page is about an organization, celebrity or topic but doesn't officially represent it.
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Facebook Community Pages
• “A Community Page is not intended to represent the voice of a brand, public figure, or organization, but rather to serve as the best collection of shared knowledge about a topic. Please note that when possible we populate Community Pages with content licensed from Wikipedia. You may wish to update the content there if you believe its presence on Wikipedia infringes your rights or is inaccurate.”
• “If you are indeed alleging this content infringes your client's legal rights and would like for it to be removed on that basis, please let us know, and we'll be happy to follow up.”
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Twitter Keyword Targeting in Timelines
• Promoted Tweet: displayed based on keywords in Tweets
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Twitter Keyword Targeting in Timelines
• Promoted Trend: featured at the top of the Trends list for a day. When clicked, it takes user to your marketing message displayed through Promoted Tweet.
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Twitter Trademark Policy for Twitter Ads
• May be considered a trademark policy violation:
Including other brands within Promoted Tweets in a misleading way– Promoting Tweets with text that misleads users about the advertiser’s
brand affiliation.
Including other brands in your off-Twitter content in a misleading way– Sharing links, images, or other embedded media that create user confusion
regarding the advertiser's brand affiliation
Featuring brands within your Promoted Trends in a misleading way– Selecting Promoted Trend names that feature trademarked brands in a way
that misleads users about the advertiser’s brand affiliation may be considered a trademark policy violation.
• Twitter does not disable or investigate the selection of keywords or interests that may be others’ branded terms
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Litigation – last resort
• Trademark infringement claim requires proof that:
a defendant has used the plaintiff’s mark in interstate commerce
in connection with the sale or advertising of goods or services,
Resulting in a likelihood of confusion as to the origin of the defendant’s goods or services.
• May be difficult in cases of innocent infringement (i.e. when mark is also commonly used name) and account is not used in misleading or confusing manner
• Negative publicity may outweigh benefits
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Virtual Worlds – Second Life
• Second Life is an online virtual world imagined and created by its residents (“avatars”)
• Over 36 million accounts created
• Over $3.2 Billion (USD) total transactions among users for virtual goods within the SL economy (US $1 = 248 L$)
• 217,266 years of total time users have spent in Second Life
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Virtual Worlds – Second Life
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Second Life Bar Association
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Trademark Infringement in Second Life
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Trademark Infringement in Second Life
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Enforcement Actions
• Report the violation to Second LifeCopy of the relevant trademark or trade dress registration(s) from the U.S. Patent and Trademark OfficeLocation in Second Life (the Region name and coordinates or, if on a website, the URL) where you believe the infringement is occurringName of the Second Life Resident whom you claim is infringing
• Informally reach out to alleged infringers
• Create an avatar who can approach the infringing avatar and request him or her to stop (Playboy)
• Set up a presence and offer those with knock-off versions the authentic product (Herman Miller)
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Litigation may be even more difficult
• First amendment defenseVideo games are expressive and artistic works
• Likelihood of confusion issues
• Use in commerce
• Jurisdictional issues
• Identity of infringer
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Take home messages
• Establish strong brands
• Register your trademarks
• Make a presence in social media platforms that are relevant to your consumers
• Balance duty to enforce trademarks with avoiding negative publicity
• Use existing tools to help stop infringers
• Litigation should be the last resort (negative publicity risk)
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Contact Information
Caroline [email protected]+1 415 954 0269
Beth [email protected]+1 415 954 0245
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