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Re:Marks on Copyright and Trademark

Social Media Part I: Protect Your Brand

By James Stewart

Earlier this month, Radiance Harris and James Stewart attended a roundtable on trademark protection in social media.  The event was hosted by the International Trademark Association (INTA) to create a forum for practitioners to share their experiences in this rapidly evolving area.  This is a multipart series that will discuss potential pitfalls, enforcement mechanisms for brand protection, and strategic tips for engaging in social media.

Practitioners agree that social media is no longer a luxury for “early adopters” or “hip” brands, but a necessity for brands to leverage bilateral communication with consumers, thought leaders, and the press.  If a brand does not have an active presence in social media, a user may create a presence for the brand.  Sometimes these user-generated accounts can adopt a laudatory tone and engage consumers better than the brand could have envisioned engaging consumers.  These accounts can grow to attract many thousands of fans.  However, all too often practitioners have seen brands take an overly cautious stance and become the subject of a dreaded “smear account” (i.e. www.yourbrandsucks.com), in which the negative aspects of a brand or consumer experiences with a brand are highlighted.  

These extremes aside, brand owners work hard to develop compelling intellectual property that uniquely resonates with consumers in a uniform and cohesive way.  Even if a social media presence created for a brand does not adopt a negative stance, does it conform to the brand approved aesthetic?  Are the correct logos, fonts, and colors used?  If they are not, or worse, if the creator has a poor experience with the brand and the tone of the page turns negative, the brand does not have control or ownership of the page or the immediate ability to take control of the message.  The brand may scramble to create its own “official” account to commence damage control, but many times this account will grow at a much slower rate than the rogue account.  Often by the time the brand has come up with this alternative account, the rogue account has grown and an online multichannel social movement has come to life. 

Are brands that have been slow to act on social media without recourse?  Not necessarily.  Many of the popular social media platforms have mechanisms for brands to recover hijacked accounts, however, most (if not all) of these mechanisms require at the very least that a brand seeking to recover a hijacked account possess a federal trademark registration for its brand name or logo. 

Formal protection of a brand’s intellectual property is a vital step which must be taken prior to a brand’s participation in social media, or as soon as a brand owner becomes aware that the brand’s intellectual property protection is deficient.  A brand’s trademark is its most valuable asset, its essence.  Without it, the brand is an indistinguishable good or service provider in the eyes of the consumer.  In social media, strong intellectual property protection also affords a brand control. 

Social media provides consumers with the ability to amplify their message by connecting with other users who share the same viewpoint.  Brand owners have become accustomed to unilateral communication in which they have total aesthetic and message control.  This type of bilateral communication and corresponding loss of a degree of control makes brand owners uneasy to say the least.  Formal protection of intellectual property combined with a proactive presence in social media provides brand owners the ability to control the message and user experience of the brand online from the outset.  It also provides brand owners with the ability to enforce brand standards and effectively deal with potentially infringing users or impersonators.  Formal protection of intellectual property for brands without an active presence in social media can be essential to establish the brand presence, eliminate infringing or impersonating accounts which may pose a threat to the brand, and serve as prima facie evidence of a valid claim in the brand.

While legal protection and enforcement mechanisms exist, it is almost never advisable to take a hard stance towards infringing users on social media accounts.  As one practitioner stated, “you may win the infringement battle, but lose the public relations war.”  Enforcement issues, potential pitfalls, and tips for brands to take a proactive but protected stance will be covered in upcoming entries.  Until then, if you have any questions about seeking formal protection of your brand’s intellectual property, please contact Ann Ford at ann.ford@dlapiper.com or Radiance Harris at radiance.harris@dlapiper.com

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