In the span of just over a decade, social media has transformed the way consumers interact with their favorite brands. According to recent estimates, there are over two billion active monthly users of Facebook alone. This massive market has proven so irresistible to businesses that virtually no industry is immune from it —even small businesses that, in years past, would be unknown outside their local market. The rise of social media platforms as marketing tools has presented challenges for trademark holders, as the negative publicity generated from trademark enforcement actions can quickly go viral and harm their reputations. As a trademark holder, you should develop a preemptive and systematic social media enforcement strategy with these risks in mind by (1) acquiring handles, (2) monitoring social media platforms, (3) enforcing your rights conscientiously, and (4) avoiding infringement of others' marks.
Please note: This blog post is a summary of the June 19, 2019 webinar titled "Protecting Brands on Social Media." For more detailed information about any of the topics herein, please view the webinar.
1. Acquire Handles
Social media branding starts with a handle — a name that your brand uses to present itself to your customers. In most cases, a brand's social media handle will be the brand's name itself (e.g., @Nike on Twitter and @nike on Instagram). But social media users are not limited to using just one handle. Social media platforms offer handles for free, so it is in your brand's best interest to acquire as many core handles — names under which consumers are most likely to seek out your brand — as you can prior to launch. For example, a brand called "Smith & Jones" could acquire the handles "@Smith&Jones," "@Smith&JonesUS," and "@SmithJones" to ensure the broadest coverage possible. Acquiring a broad range of handles makes those handles unavailable to other users, thereby minimizing infringement and the need for later enforcement efforts.
Brands should also be consistent in their use of social media handles to ensure that consumers will recognize it on every social media platform on which it appears. This will require tailoring your brand's handles to comply with the platform's handle formatting requirements, as every platform has different rules. For example, Twitter and Instagram use the "@" symbol before the account name, while Facebook does not. Twitter allows up to 15 alphanumerical characters per handle, while Facebook allows up to 50. Some platforms allow underscores and other special characters, while others allow only letters and numbers. You should identify the social media platforms that are most important in your brand's industry and choose handles that will be consistent across all platforms.
2. Monitor Platforms
Monitoring social media platforms can be a useful tactic not only for data-gathering and marketing purposes, but also as a strategy for detecting potential trademark infringement. The extent and frequency with which a company monitors its social media platforms will depend on a number of factors, such as its budget and the amount of infringing activity that is occurring. However, your brand's social media monitoring efforts should, at the very least, occur on a routine basis and be undertaken by a streamlined management team, whether that team is in-house, a vendor, or an outside counsel. You should also know what to look for when monitoring social media. Generally, clearly-marked fan pages that use your brand's logo — such as "Smith & Jones Fan Club" or "I Love Smith & Jones" — pose a low risk of infringement or brand dilution. However, pages that use your logo to impersonate your brand, sell competing products, or engage in phishing attempts pose a much greater risk of infringement.
It is impossible for a brand to pursue enforcement actions in every case of trademark infringement, nor does the law require it. "The owner of a mark is not required to constantly monitor every nook and cranny of the entire nation and to fire both barrels of his shotgun instantly upon spotting a possible infringer." Eng'd Mech. Serv. V. Applied Mech. Tech., 584 F.Supp. 1149 (M.D. La. 1984). Rather, a more reasonable and effective trademark enforcement strategy is for a brand to utilize a "big picture" approach that takes into account both the brand's enforcement budget and its PR concerns. There is also a fine line between protecting the brand and being a bully. Brands risk losing the goodwill they have worked hard to develop by pursuing enforcement actions against sympathetic infringers — such as individuals and small businesses — or by relying on legal theories that, notwithstanding their validity, seem unfair to the average person. To avoid being labeled a trademark bully in the court of public opinion, brands should keep three directives in mind when devising enforcement strategies: (1) be an educator, (2) be engaging, and (3) be kind.
Be an Educator
When you notice a social media account engaging in infringing activity, simply educate the user about the platform's policies. For example, Twitter's parody, newsfeed, commentary, and fan accounts policy states that the account name should not be the exact same name as the account subject without some other distinguishing word such as "not," "fake," or "fan." You could also give the user a crash course in trademark law by explaining the concept of trademark genericization and how the user's activities are directly harming your brand — a brand that they obviously care about. Infringers are much more likely to comply with your demands when they understand that you have a legitimate reason for making them.
Another tactful trademark enforcement strategy is to engage the user by making inside jokes or "speaking brand." Rather than speaking for your brand, speak from your brand — i.e., speak to the popularity of your brand and the responsibilities that come with it. This letter that Netflix sent to the owners of a Stranger Things-themed pop-up store illustrates this concept perfectly:
My walkie talkie is busted so I had to write this note instead. I hear you launched a Stranger Things pop-up at your Logan Square location. Look, I don't want you to think I'm a total wastoid, and I love how much you guys love the show. (Just wait until you see Season 2!). But unless I'm living in the Upside Down, I don't think we did a deal with you for this pop-up. You're obviously creative types, so I'm sure you can appreciate that it's important to us to have a say in how our fans encounter the world we built…So please don't make us call your mom.
The letter puts the recipient at ease by employing a playful tone and making numerous allusions to the subject matter of the trademark at issue. It demonstrates that the trademark holder appreciates that the user is a big fan of the mark, but must nonetheless enforce its rights. Infringing users are more likely to quickly take action or to communicate with you when they are not scared of you.
In the age of viral social media, enforcement actions are likely to become public. Therefore, pursue enforcement actions that have a low likelihood of engendering ill-will and negative PR should they be publicized. The easiest way for brands to be "kind" toward infringers is to acknowledge them as fans of the brand. When possible, contact the infringer directly through a private message or a request that they give you a call. This human touch is less intimidating than official takedown notices from the social media platform or threats to terminate the infringer's account, and reduces the likelihood of the infringer becoming defensive. You could even go one step further by sending the infringer complimentary branded merchandise or free products as a way of thanking them for complying with your request. When you make the infringer feel appreciated, he or she is less likely to publicly denounce your enforcement efforts.
Consider Your Budget
Also consider your budget when establishing your enforcement strategy, as the size of your budget will dictate which enforcement techniques you pursue. In the hierarchy of techniques for dealing with infringement on social media, some are more expensive than others. Contacting the user directly is an inexpensive strategy that, depending upon how deftly you handle the communication, may solve the problem without resorting to more expensive remedies. However, if contacting the user directly, filing a takedown notice, or escalating the issue to platform executives does not work, you may have no other choice than to send a demand letter or even resort to litigation. When working out an enforcement budget, also consider the costs of opting out failing to enforce your brand's trademarks could harm the brand through trademark dilution, consumer confusion, and lost sales. With these risks in mind, your strategy should balance the cost of the enforcement action against the severity of the infringing activity.
4. Don't Infringe
Finally, do your utmost to ensure that you are not infringing others' marks. In the context of social media, posting, re-posting, and sharing content (both first-party and third-party content) is particularly fraught with opportunities for trademark infringement. When posting first-party content, take care not to suggest an affiliation or endorsement that does not exist — for example, by posting photos of a celebrity shopping at your brand's stores or using your brand's goods where there was no licensing agreement between the parties. Also make sure that you are not engaging in trademark infringement when re-publishing third-party content, as the original creators of that content may be able to assert trademark or copyright claims against your brand. While most social media platforms allow users to freely repost content within their platforms, brand owners often are held to a higher standard than individuals. Thus, using third-party content for commercial purposes is always a high-risk endeavor, and you should be particularly careful when doing so.
Authors: Lisa Greenwald-Swire and Michelle Oberfell Parsons
For more information about protecting your brand on social media — from acquiring handles to developing an enforcement strategy to optimizing that strategy to fit your budget — please view our webinar "Protecting Brands on Social Media," contact your Fish attorney, or email us at email@example.com.