Trademark Registration Can Help Prevent Online Infringement

Trademark Registration Can Help Prevent Online Infringement

The proliferation of social media has created a number of new ways for New York City businesses to engage with their customers and boost brand loyalty. However, businesses must be mindful of how their brand is used online, particularly by infringers that may seek to capitalize on their success.

Trademark Infringement and Social Media

In the age of social media, trademark registration can help police online infringement. As we discussed in prior articles, federal trademark registration is advisable. Key benefits include public notice of your claim of ownership of the mark; a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration; and the ability to bring an action concerning the mark in federal court. In the arena of social media, federal registration can be a prerequisite for protecting your brand.

Cybersquatting and Social Media

Cybersquatting — the practice of registering or using a domain name to profit from the goodwill of someone else’s trademark— is increasingly prevalent. If a domain name uses a company’s trademark without authorization, there are a number of legal remedies. For instance, the Uniform Domain Name Dispute-Resolution Policy (UDRP) requires trademark-based domain-name disputes to be arbitrated and establishes procedures for quickly resolving disputes. Under the Anticybersquatting Consumer Protection Act (ACPA), trademark holders can file suit against a domain registrant that has a bad faith intent to profit from the mark and registers, traffics in, or uses a domain name that is identical or confusingly similar to a distinctive mark or identical or confusingly similar to or dilutive of a famous mark.

Cybersquatting also frequently occurs on social media. However, the federal statutes discussed above only apply to second-level domains, such as apple.com or amazon.com. They do not apply to the usernames business receive when they register for a social account or the corresponding subdomains, i.e. https://twitter.com/applemusic. In addition, unlike the Digital Millennium Copyright Act (DMCA), there is no established mechanism for online trademark infringement.

In the absence of federal regulations, Facebook, Twitter, Linkedin, and other major social media platforms do have specific procedures for addressing cybersquatting and other forms of trademark infringement. The complaint forms generally require the trademark owner to provide a trademark registration number and a brief statement describing of how the user is infringing the mark or otherwise causing consumer confusion. However, trademark owners can only request that the infringing account/page be taken down.

Trademark owners can also pursue a traditional infringement lawsuit. However, some plaintiffs may have limited success if the defendant isn’t using the social media site to sell goods/services because the Lanham Act requires use of the mark “in commerce.” Because trademark law has failed to keep up with social media, a business must be proactive. As the saying goes, “an ounce of prevention is worth a pound of cure.” Proactively registering your key trademarks on social media sites helps deter opportunists from getting there first. While most businesses now have a Twitter, YouTube, and Facebook account, it is important to stay on top of emerging platforms that customers may be using.

If you have any questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, Jason LaBerteaux, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.