Protecting Trademarks in Web 2.0

During the past decade and a half, the Internet has grown from a small array of just a few thousand Web sites to a vast network of hundreds of millions of distinct sites, containing billions of Web pages. Although the Internet has presented a new frontier for both trademark use and infringement, the growth of social media sites during the past few years has posed particular challenges for brand owners. These sites, which include blogs, virtual worlds, marketplaces, image networks and relative newcomers such as Facebook and Twitter, allow users to interact with each other, effectively building a community.

Keep Up ' and Be Active

With this landscape changing so rapidly, the first challenge for brand owners is simply to keep up with the evolving technologies and platforms. After all, five years ago, Facebook was a small private network for students at educational institutions and Twitter did not even exist; today, these platforms are a part of the daily lives of millions of users. In order to properly protect their brands and trademarks, brand owners should plan to conduct regular assessments of the available social networking and Web 2.0 sites, with an eye toward determining how popular these sites may be with the brand's target consumers and the ease of using these sites for infringement purposes.

Whether or not brand owners plan to become active in these spaces in the short term, they should keep in mind that their employees and customers may already be avid users of social media. Therefore, brand owners should take care to develop detailed use policies, both for employees and for third parties that may become a part of the user community. These policies should address in what context (if any) employees and third parties are permitted to mention the company and brand name, and, especially, who is authorized to speak on behalf of the company or brand and what internal reviews must take place before content is posted that mentions or concerns a brand (i.e., a review by the company's legal department or outside counsel). These policies should extend to affiliates and licensees, and should be an element of any legal agreements between the company and third parties regarding brand and trademark use.

Setting Up on Social Media

Although social media can provide many excellent marketing and promotional opportunities for brand owners, entering these spaces can require a large time and financial investment. Thus, brand owners should take care to ensure that they are using the optimal platforms that will build their brands and reach the desired community of users. First, an assessment of the consumer demographic is a critical element of this process. Brand owners should choose the platforms that will reach their target customers and should not feel the need to build a presence on every single available platform.

In addition, before committing to a social media initiative, brand owners should keep in mind that users of social media expect regular content updates, and that setting up social media sites and profiles and then neglecting them may do more harm than not using these platforms at all. Any budget for social media should take into account the costs and human capital necessary to maintain and update the content.

As the landscape of available sites changes rapidly, the policies of existing sites also may change quickly in ways that affect trademark use. For example, earlier this year, Facebook announced a policy that would allow users to create customized usernames for their profiles, with accompanying personalized URLs. This policy was announced only a few days before it went into effect, forcing brand owners to act very quickly to prevent potential third-party registrations that incorporated their trademarks. Brand owners that were not aware of the policy development, and especially those that were not familiar with the Facebook platform, would have been at a distinct disadvantage in terms of protecting their marks.

Monitoring the Sites

Certainly, monitoring the entire landscape of social media sites for policy developments can be a daunting task, especially for smaller and midsize brand owners that may not have internal staff resources to devote to such an endeavor. Brand owners may wish to partner with outside counsel in their monitoring efforts. If selecting outside counsel to advise on such matters, brand owners should look for counsel who are experienced in addressing Internet brand-enforcement issues, particularly in social media and Web 2.0 spaces. These specialists will usually monitor these spaces for daily policy developments and will promptly inform their clients of developments requiring their attention.

Protecting a brand from cutting-edge infringers who look for policy changes as an opening to engage in infringement activities is a sizable task in itself; in addition, brand owners need to determine how to monitor social media sites on an ongoing basis. Once again, brand owners should work with their marketing departments to assess the demographics of their target customers. Do their customers typically use social media sites and, if so, which ones? Are their customers likely to use relatively new sites (for example, Twitter), or is their use limited to reading the occasional blog or shopping on eBay? This research will assist with prioritizing enforcement efforts.

After completing this research, brand owners should develop an enforcement strategy that addresses the platforms that may be most problematic in terms of infringement activity. Due to the vast nature of the Internet, it is not cost-effective, or even physically possible, to review every single Web site, or even every social media platform, in great detail. However, by using a well-planned enforcement strategy, brand owners can ensure that they are regularly reviewing the platforms that are of greatest interest to their consumers, significantly reducing the likelihood of confusion due to potential infringement.

While monitoring the designated platforms, brand owners should keep in mind which types of potentially infringing content are likely to be most problematic from a trademark perspective. Several types of content that can cause direct harm to a brand and its good will include: sale of counterfeit goods and services; direct trademark infringement (copying a word mark or logo exactly); using the brand or company name in a derogatory or defamatory manner (in a manner extending beyond a critical product or service review); using the brand name in conjunction with false or misleading information; and impersonating company personnel. Due to the potential for harm and for confusion to the company's consumers, addressing these types of infringement should be a priority for brand owners.

Third-party trademark uses that should be a lower-priority concern include items such as product or service reviews, blog or message board posts that mention the brand name or limited use of marks for informational purposes, especially when the marks are clearly identified as property of the actual brand owner. These uses are likely to be considered fair use and covered by the First Amendment. In addition, brand owners may receive bad press and backlash from their consumer community for overzealous enforcement efforts. Brand owners should keep in mind that social media sites are composed of a community of users, and must be sensitive to the views of these users, who often are strong supporters of the brands they patronize.

In addition to determining which platforms to monitor as priorities and understanding the types of infringing content of greatest concern, brand owners should review the trademark-use policies and complaint mechanisms for the platforms for which they will be conducting trademark enforcement.

To ensure efficiency and prompt attention to such matters, brand owners should ensure that they have resources that are familiar with the complaint mechanisms and understand how to achieve the desired results, whether internally or through outside counsel. Results from using the complaint mechanism may include removal of the infringing content (or, in the case of an infringing username or profile, transfer to the rightful brand owner) or banning the infringer from future use of the platform. If the content is particularly damaging or if the platform lacks a satisfactory complaint mechanism, the brand owner may wish to send a cease-and-desist letter directly to the infringing party or, in extreme cases, initiate litigation.

Conclusion

The world of social media may appear daunting to brand owners from both a use and an enforcement perspective, especially to those who have not yet developed familiarity with these platforms. However, given that the popularity of these sites will only continue to grow, even as platforms change and new ones emerge, brand owners will likely find that devoting resources to developing enforcement strategies and use policies now will pay off by allowing them to retain control and integrity of their brands as these spaces evolve in the future.