It is no doubt surprising and frustrating for brand owners when they find that someone has appropriated their trademarks on social media. A few of the common scenarios include:
- small competitors modifying logos and passing them off as their own;
- unauthorized distributors using logos and trademarks on their social media advertising; and
- social media users registering account names that incorporate trademarks.
Pursuing the usual enforcement techniques can be difficult on social media, particularly when the identity of the infringer is unclear or unknown. The good news for brand owners is that most social media websites prohibit the infringement of another’s intellectual property rights in their terms of service.
Moreover, many social media platforms have developed procedures for brand owners to report trademark infringement violations and will remove the infringing content after finding a violation of their terms of service. Some websites, like Facebook, Twitter, Instagram, and YouTube, have even developed online forms for their reporting process. Expect to provide details of any relevant trademark registrations, copies of registration certificates or a link to the corresponding record in the trademark office’s online database, and a brief explanation of how the reported content is infringing the trademark.
Brand owners should also keep in mind that not all trademark uses are necessarily infringing. Some users on social media, for instance, may have a fair use defense to their use of the trademark, and other uses may be deemed “non-commercial.”
Another problematic scenario that many trademark owners run into is when an individual has registered a username incorporating a trademark for the individual’s personal use. Many social media websites may not consider this type of behavior to violate their terms of service. Instagram, for example, provides the following guidance on its trademark policy page:
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 Instagram’s trademark policy.
Furthermore, some social media platforms have explicit first-come, first-served registration policies. Accordingly, the best solution for avoiding this scenario is preventative registration of usernames, even for variations of the trademark that will not be used.
If an inappropriate use of a trademark occurs, factors that can be persuasive for showing an intellectual property violation include evidence of impersonation, bad faith, or use of the social media account in a way that approaches commercialization, such as through the endorsement or promotion of other products or businesses. Evidence of actual confusion found in comments and misdirected hashtags may also help establish a case of trademark infringement.
Although enforcing trademark rights on social media may sometimes feel overwhelming, early registration, vigilant monitoring, and taking advantage of the online complaint procedures can help brand owners develop a sound social media policing strategy. Brand owners might also consider signing up for the social media watch services that many trademark clearance vendors are now offering. For more information about enforcing other intellectual property rights on social media, read our previous blog here.