A Brand Owner’s Guide to Leveraging Intellectual Property to Protect Social Platform and eCommerce Assets

Ulmer & Berne LLP

Why is it important for brand owners to protect and enforce their brand(s) online?

As many brands have come to learn the hard way, misuse and misappropriation can threaten your image, reputation, perceived goodwill, and overall enterprise value, which directly correlate to lost revenue. Registered trademarks and copyrights are valuable, but it is imperative that brand owners proactively leverage these rights to secure and maintain key social media platforms. Using your registered IP assets in this manner may be easier, faster, and less costly than you realize. In many cases, a platform’s Terms of Use are far more brand-friendly and efficient than pursuing the same action through litigation.

Dave Knox, serial entrepreneur and author of Predicting the Turn, notes that, “for e-commerce and DTC companies, IP rights can be more than just a way to protect your broader brand. Litigation can be expensive and a resource drain, but many platforms will allow you to efficiently and cost-effectively secure key handles, domains, and storefronts through their own resolution process if you have the right protections in place.” For one of Knox’s companies, utilizing the tools provided on digital platforms like Facebook and Instagram resulted in a positive resolution in a matter of weeks, where through litigation it might have taken years.

What steps can brand owners take to protect their brand(s) across digital platforms?

(1) Register IP with the appropriate government agency.

As a preliminary step, brand owners should register key trademarks and copyrights with the appropriate government agency. Some digital marketplaces, such as Amazon, even require proof of IP registration in order to register with its Brand Registry. Providing proof of these registrations is often a key step in expediting the removal of infringing material from digital platforms. And, to the brand’s advantage, many platforms default to pulling infringing content at the beginning of a dispute rather than waiting for a final resolution.

(2) Proactively register brands as usernames and handles across social media sites.

Even with the tools now available, it is easier to be the first to secure handles, storefronts, and the like for a brand if available. In some cases, you should do this before you apply to register your IP as some nefarious parties review trademark application filings and scoop up key handles to hold brands hostage. Acquiring social media handles and usernames for your brands renders those assets unavailable to others, minimizing infringement and the need for future enforcement efforts. For example, Amazon’s Brand Registry program offers predictive protections that attempt to identify and remove product listings for goods infringing on a brand owner’s brand.  Amazon’s Registry allows brand owners the ability to easily update their product listings and prevent others from changing them—the brand owner alone has control over presentation and descriptive details of his/her products.

(3) Monitor social media and online platforms for infringing uses.

Simply registering your brand on social media platforms may not be enough to preserve your IP rights. Companies must monitor platforms for unauthorized uses and, as new platforms arise, your brand should quickly secure necessary handles and other rights before a dispute arises. Brand owners should also consider monitoring meta tags on infringing websites. When entering metadata to improve their search rankings, website owners often embed third-party trademarks to attract traffic to their site. This use not only diverts website traffic from the brand owner’s website, but allows the website owner to profit from increased exposure and misdirected sales. A website operator’s intentional use of third-party trademarks in meta tags, website copy, and code may be considered infringement of a brand owner’s IP rights.

(4) Diligently enforce IP rights.

If you are not the first party to secure a key digital branding asset, but you have followed the steps above, most digital platforms include provisions in their Terms of Service that protect brand owners against unauthorized use of IP. Many platforms include a portal for reporting, detailed procedures to enforce registered, and even unregistered IP, and a point of contact to help in quickly resolving the dispute. Having an attorney on your side that is familiar with these procedures can further increase the speed and effectiveness of a takedown.

Today, engaging with customers on digital platforms is essential to the success and growth of eCommerce and DTC businesses. Before allowing misuse of your brand or engaging in expensive IP litigation, consider other tools that may achieve your objectives efficiently and cost effectively.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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