Social media has become an important tool to connect with one another and as a means to promote one’s business ideas. Visibility of products or services is just a few clicks away on a computer, tablet or smartphone. Social media networks pose a challenge for trademark law and specialists suggest various strategies for trademark protection.
Activity in social media not only provides information on a product or service identified with a trademark, but also contributes to the general image and reputation of a person or company. Trademark counsel should be involved in the drafting of a company’s social media policy in order to regulate the use of a company’s name and trademarks on any platform, including employee´s personal accounts. The policy should address the type of content that is permitted, the personnel allowed to post content, and the appropriate time to post.
The policy should offer a clearance process prior to the use of an expression, design or image. This will prevent any third-party infringement claims.
Counsel should implement the use of online agreements for social media platforms in order to regulate the monitoring of third parties’ uses and activities.
The policy should also cover the enforcement of trademarks and copyrights, taking into account the type of infringer, the government regulations that may apply and the potential negative effects on the company. Personnel such as members of the marketing group, the company’s press or public relations department, and of course, someone from the legal department should receive reports on damaging or infringing posts. There should be constant monitoring of social media platforms and websites in order to find infringements or damaging uses. Meaningless remarks or uses of a trademark should not be the main concern. Monitoring should focus on finding misuse of trademarks that could mislead consumers to believe that a use or remark was made with the trademark owner’s authorization.
The usual approach: cease and desist communications
Loopholes in a policy should be addressed by an expert trademark counsel with proper research and good judgment. As mentioned before, sometimes there are no black and white answers and a well-thought process may require the involvement of personnel from other areas such as marketing, communications, PR and those working on the development of a product or service under a certain trademark. Challenges continue as additional social media networks develop and the number of websites that offer products and services grow.
Hashtags serve a very simple yet clever function: drawing attention. For this reason, the use of hashtags has become increasingly common for companies and individuals as a marketing strategy, however, their use can turn into a headache for trademark owners since it is very difficult to prevent third parties from posting discrediting or harmful content through hashtags that link a trademark and could be damaging to a company’s reputation. In some cases, unscrupulous fellows also use hashtags in social media in order to free-ride on someone else’s trademark reputation and use it for massive unauthorized or counterfeit sales. Some of these cases have resulted in rulings from the courts in which the legitimate owner’s complaints have been upheld and free-riders have been sanctioned due to trademark infringement.
In Eksouzian v. Albanese, Case No. 2:13-cv-00728-PSG-MAN (C.D. Cal.)parties who manufactured and sold the same type of product (compact vaporizer pens) agreed to settle trademark infringement claims. The parties agreed that, whilst the plaintiffs had exclusive use of the word ‘CLOUD’ as a unitary mark, it could not use the word ‘CLOUD’ in close association with the words ‘PEN’, ‘PENS’, ‘PAD’, etc. (a conduct allowed to the defendant). The defendants used the following image to promote their product:
The plaintiff used the hashtag ‘#cloudpen’ in social media. The defendant claimed that this was a violation of the agreement. The court concluded that “hashtags are merely descriptive devices, not trademarks, unitary or otherwise, in and of themselves” their use “is merely a functional tool to direct the location of the plaintiffs’ promotion so that it is viewed by a group of consumers, not an actual trademark.”
While the use of the # symbol seems not to be a clear breach of trademark rights their use is not completely clear for free use. During the Olympic games of July 2016, held in Rio de Janeiro, a controversy arose involving the use of ‘#Rio2016’. The USOC (US Olympic Committee) sent cease and desist as well as warning letters to non-Olympic sponsor companies that used USOC’s trademarks in hashtags and social media, such as #Rio2016 and #TeamUSA. Oiselle, a women’s apparel company, posted “She’s going to Rio!” and “#RoadtoRio” in an Instagram post when one of their sponsored athletes qualified for an event. Soon after, the USOC contacted Oiselle requesting cease of use. Eric Goldman, a Professor of Law at Santa Clara University, interviewed by the BBC, considered the approach as “overly aggressive and ridiculous”: “I think that trying to tell companies that they can’t use the hashtag #Rio2016 or #TeamUSA in their tweets, most of the time they’re going far afield of what the law permits and when companies use the ambiguities of trademark law to try and squelch socially beneficial conversation, I call that bullying.”
The German Olympics Sports Confederation and Team Gb (the mark name used since 1999 by the British Olympic Association (BOA) for their Great Britain and Northern Ireland Olympic team), as did the IOC on the topic, published guidelines that emphasized the strict restrictions on the use of IOC registered marks by non-sponsors. Such guidelines covered the use of hashtags such as #Rio2016. They explained that such use verged on trademark infringement territory and as such, non-Olympic partners and non-sponsors should refrain from their use. IP rights policies such as Twitter’s, with strict management of copyright infringement, received requests to remove trademarks in hashtags. No legal action was taken although it is clear that the use of wording related to the Olympics by non-sponsors should not be pursued. The argument that use of a mark in a hashtag as merely descriptive will likely be unsuccessful in such cases.
There are some cases in the U.S. in which third parties have attempted to use hashtags as evidence of the distinctiveness of a mark. The USPTO however, has declared that hashtags are not considered a significant source of distinctiveness “because a hashtag will usually be perceived as part of an online social media search term, a hashtag generally serves no source-indicating function and adding such symbol or term to an otherwise unregistrable mark typically does not render the mark registrable.” In light of the foregoing despite the popularity and effectiveness that a hashtag may have on social media, this will not necessarily have the same positive outcome in the registration process of a trademark.
A mark comprising or including the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services. The symbol and the wording HASHTAG does not provide any source-indicating function because they merely facilitate categorization and searching within online social media […]”
An example of the use of social media as a means to advertise a mark, without incurring in trademark infringement, is the advertisement of Oreo cookies in a twitter post during a power outage at the Super Bowl a couple years ago. They tweeted a picture of an Oreo cookie with the caption: “You Can Still Dunk In The Dark.” While the ad could connect the sentence with the Super Bowl, there was no use of hashtags or names to the competition or the sports teams /companies.
While companies and individuals should be careful and refrain from using third party trademarks in their ads and promotional materials as well as social media, it is important to recognize that some uses by third parties in hashtags and articles are simply informative and considered newsworthy material. In light of this, a careful assessment of the use should be conducted prior to the release of the remark on social media in order to avoid uncomfortable situations that involve cease and desist requests and claims from trademark owners.