Intellectual Property, Social Media, Trademarks

Policing Trademarks In A Social Media World

When protecting a brand via cease-and-desist letter, what you say isn't as important as how you say it.

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When I first began practicing trademark law years ago as part of my intellectual property practice, I was struck by how important it was (and is) for trademark owners to police their trademarks as opposed to other forms of intellectual property.  It makes sense — trademarks distinguish your goods and services from others (especially the competition), and help the consumer identify with your company as the source of its goods.  Since trademarks gain value from actual use, it is axiomatic that trademarks must be policed by the trademark owner to ensure that they are not improperly used by others — if not, the trademarks can lose their value, and in the worst case scenario, cease functioning as trademark entirely.  That said, how trademark owners police their trademarks has become an increasingly delicate proposition… and we have social media to thank for it.

Although social media provides an incredible reach for brand owners, it also provides a voice to consumers — one need only bring up Facebook or Twitter to see people actually interacting with brands.  In fact, many argue that this interaction is a marketing “Holy Grail” of sorts, further establishing secondary meaning in the trademarks and the goodwill behind them.  Unfortunately, this interaction can cut both ways — consumers can now voice frustration in a brand immediately by sharing those frustrations online with their entire social media following.  Worse, unscrupulous sellers use various social media platforms as channels for advertising counterfeit products to unwary consumers by “passing off” counterfeit goods as real ones; unwitting consumers purchase these fake goods, mistaking them for the real thing, usually with the brand owner taking the brunt of the fallout on social media.

Gone are the days where a brand owner can simply send a strongly worded cease & desist (“C&D”) letter to an offending user — nowadays, it is not uncommon for a trademark owner to see its demands disseminated online as part of the rant of the recipient.  In some cases, I have even seen a copy of the brand owner’s C&D letter posted verbatim on social media accounts in an effort to demonstrate how inflexible and “mean” they are for even doing so. Frustrating? From a brand owner’s perspective, absolutely.  Fair?  Not really, but this is the reality of the online world today, and something that must be addressed in the proper context by all trademark owners policing their brands online.

How is a trademark owner supposed to juggle its need to police its trademarks with its social media presence to avoid potential fallout, alienating the consumers it relies on to succeed?  Believe it or not, it can be boiled down to one word:  communication.  I know what you are probably thinking (the expression “duh” comes to mind), but you would be stunned how many brand owners forget that how you communicate your brand (and protect it) doesn’t end at the label.  Language matters. Here is why:

  • Treat Brand Protection As An Extension of Your Marketing.  Companies need to understand that marketing strategy and attendant marketing campaigns convey specific traits that are tied to the brand, and help develop secondary meaning behind their trademarks.  Effectively communicating the brand’s traits helps the consumer understand the value and quality behind the brand.  Effective brand communication includes how the brand sells its products and the authorized channels through which it does so. As a result, the consumer becomes empowered to discern between genuine goods and counterfeit ones based upon brand communications at the outset. Using social media to help consumers relay these traits through product promotions and other marketing campaigns becomes an extension of this communication, using the voices of consumers on social media to further the process.  Granted, brand owners will need to police such consumer communications, but the benefits of leveraging these platforms far outweigh the risks.
  • Know the Difference Between Free Expression and Infringing Uses.  As brand communication is disseminated across various social media platforms, brand owners must remain aware of the tools available on those platforms to address potential infringement, as well as their limitations.  In most cases, social media platforms have policies that prohibit infringing uses of other’s trademarks.  That said, social media platforms are designed to permit the free flow of expression, and most of them take First Amendment expression quite seriously (as they should).  Brand owners need to work very closely with qualified IP counsel to properly draw the line between legitimate fair use/parody and actionable trademark infringement, as the intersection of trademark law and First Amendment expression is a complex one and requires a deft legal hand.
  • Never Send C&Ds Without Weighing the Risks.  Trial lawyers are trained to never ask questions on cross-examination to which they do not know the answer (or how the witness may answer it). Brand owners should view C&D letters through a similar lens by never taking the recipient of the demand letter for granted — every case is different and understanding who is receiving the letter will help understand how they may react to it.  Brand owners must assume that any C&D letter is a postcard that can be circulated well beyond the recipient.  Understand who you are sending it to so that the language corresponds to the intended subject matter and helps shape the intended response.  Using language designed to educe the intended response will maximize how they react. For example, sending a draconian C&D letter to a mom who is selling allegedly counterfeit jewelry via her little online shop is not only ill-advised, but downright stupid.  She may not know that she is selling counterfeits, and may herself be a victim of unscrupulous sellers.  Sending her a C&D letter that explains the  work done to establish the value of the brand, the company’s duty to police it, and why the company is concerned about her sale of the goods in question will not only establish the brand owner as caring about its brand, but its consumers as well.  On the off chance she does know the goods are knock-offs,  there may be no harm in being direct yet non-combative if investigation reveals it will serve the intended purpose — she will have been put on notice and cannot use the C&D letter as a tool against the brand on social media.

Social media is making brand communications easier, but the policing of  trademarks a much more complicated endeavor.  By policing your trademarks in a manner that accounts for greater brand interactions online, your company (or clients) will avoid many of the pitfalls that can unwittingly damage the brand.  Don’t get me wrong — there is a time and a place for strong, direct C&D letters when the circumstances demand it.  In many instances, however,  such circumstances simply may not exist. My mother told me a long time ago that you attract more bees with honey than with vinegar — it seems her wisdom translates to trademark policing in a social media world in more ways than you’d think.

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Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at tom.kulik@solidcounsel.com.

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