As the coronavirus pandemic roils the global economy, companies are caught in the crosshairs on how to acquire and retain customers. From mom & pop stores to big-box retailers, COVID-19 has forced many companies to consider or expand their presence on social media because, apart from the obvious – needing more sales, social media usage has significantly increased. According to a recent market survey, 46% to 51% of US adults are using social media more since the outbreak began.
In addition to accessing a wider consumer pool on social media, there are several benefits to a company proactively protecting its brand on social media via trademark registrations to include: (1) the company could license or assign the mark to generate additional revenue; (2) as a viable asset, trademarks increase the value of the business; (3) trademarks can be used as security interests in certain financial transactions; (4) successful registered marks are beneficial during M&A transactions and other deals; and (5) the company will have standing to enforce its trademark rights.
While social media is a viable option for new and existing brands to promote their products and services, it’s not without its challenges – especially, those related to competitors and the protection of their intellectual property.
Given the benefits of trademark registration, here are four necessary steps every company should take to protect their trademarked brands on social media:
Step 1: Do Your Homework
Intellectual property is very analogous to real property (e.g., land, buildings, etc.). Before you purchase real property, a title search is performed to discover whether there are any claims or liens filed against the title. Similarly, before spending the time, effort, and resources in securing your companies social media handles and domain names, it is recommended that companies perform a comprehensive trademark search on the potential brand name, slogan, or hashtag to ensure that no other company is asserting exclusive rights in the desired mark.
Typically, depending on the service provider, a good trademark search will not validate the existence of federally registered marks, but also state registrations. It should also identify social media mentions, as well as domain names in various iterations of the name to avoid a likelihood of confusion claim.
So, the take away here is that, while the social media handle may be available on a company’s preferred social media platform, that does not mean someone has not filed a federal trademark. So, before a company launches a brand on social media and secures the domain name and social media handles, it should perform a comprehensive trademark clearance search.
Step 2: Register Your Trademark
Presumably, all goes well with the clearance search, let’s talk about registration. What is a trademark and what can be registered? I’m often asked this question so in its simplest form, a trademark is the brand or source identifier that is associated with your product or services. A company could register its business name, a specific product brand, a slogan, or even a #hashtag.
One of the benefits of trademark registration is that it prevents your competitors from using the same or similar name in a category or space that a company occupies. Registering your brand as a trademark also protects your company’s products or services from competitors who may try to use a confusingly similar name for their business’s product or services in an effort to hijack the time, effort, and resources a company has invested in its brand(s).
For example, let’s use Nike as a case study. Here are some of Nike’s trademarks and what was trademarked:
Company name (ex. Nike)
Company logo (ex. the Nike “swoosh” logo)
Company slogan (ex. “Just do it.”)
Company brands (ex. Nike’s Air Force 1)
As demonstrated by Nike, a company could have multiple trademarks within a specific company and/or products; therefore, companies should consult with an experienced trademark attorney to learn the benefits of protecting other aspects of their business through trademark protection.
Step 3: Secure Your Company’s Social Media Handles
Ironically, a company can own the business name (e.g., via LLC formation in your specific state) but may not have much recourse against a competitor that has secured the same business name via social media. So, does your company own all of the social media handles associated with the company and its brands? If not, your company and brands may be at risk.
For starters, to avoid this from being an issue – be sure to trademark the company or brand name in which you’re looking to secure on a social media platform. Thus, in the event a competitor registers your trademarked names as a social media account, a company may be able to avail itself to the social media website’s trademark infringement dispute resolution process. This is also applicable to goods sold on Amazon. However, keep in mind that company’s US trademark protects the brand in the US and not other countries so if your products are sold globally, then your company should consider registering your marks in other countries, as well.
Secondly, to prevent a competitor from securing confusingly similar social media accounts as your trademarked names, a company should consider proactively securing the company name, as well as brand names on the major social media platforms in which its products and/or services will be promoted. Even if a company has yet to develop a plan on how to use social media to market its products/services, at least the brand will have peace of mind knowing that it has protected these valuable online brand assets from competitors. While not an exhaustive list, a company should consider proactively registering its company name and brand on the following social media platforms:
- Company Name Page (ex. Facebook.com/Reebok)
- Brand Page (ex. Facebook.com/ReebokWomen)
- Company Handle (ex. Reebok)
- Brand Pages (exs. Reebok Classics)
- Company Handle (ex. @Reebok)
- Brand Page (@ReebokClassics)
Step 4: Monitor Your Marks and Enforce Your Rights
If you’ve read any of my content, you’ll know that I tend to include this point in all of my trademark articles because it is such an overlooked yet viable part of maintaining the distinctiveness and validity of registered marks. As a trademark owner, it’s on the company to monitor and protect its trademark – or it may risk losing trademark protection. Going back to my real property analogy, in real property, you may have heard of the doctrine: Adverse Possession. And, in its simplest form, it allows someone to take possession of someone else’s real property and thus, invalidates the previous owner’s rights in the property because they failed to protect and assert their rights. While a competitor cannot take “physical” possession of your trademark, they can weaken the mark and thus move to invalidate it, if you are not monitoring and pushing back against infringers.
As a trademark owner, it’s the company’s responsibility to actively identify potential infringers and take appropriate action against them and, you can do that by:
First, a company could hire a law firm or third-party company to monitor and flag any potential issues on its behalf.
Second, depending on the size of the company, it could have a dedicate resource that routinely monitors the company’s brands via social media to help identify and report potential infringers.
Finally, companies should have an internal social media policy that addresses – among other things, how to handle trademark infringement matters. The policy should consider action steps when infringement is discovered, escalation/reporting, authority to engage legal or the designated social media platform(s) in which the infringement has occurred.
The benefits of trademarks can certainly outweigh the risk, if a company takes the requisite steps to vigorously protect and monitor its brand on social media.
Should you have any trademark questions, please do not hesitate to reach out.