Five steps to protect your trademarks in the web 2.0 world

• Author: Liisa M. Thomas - Robert H. Newman
• Position: Winston & Strawn LLP, Chicago, Illinois, USA
• Pages: 17-19

Liisa M. Thomas and Robert H. Newman, Winston & Strawn LLP, Chicago, Illinois, USA explore the steps that

trademark owners can take to protect their marks on increasingly popular social networking websites.

This article was adapted with permission from the INTA Bulletin (Vol. 65, No. 10, May 15, 2010; Copyright

2010 the International Trademark Association).

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FIVE STEPS

TO PROTECT YOUR

TRADEMARKS

in the Web 2.0 World

tools that brand owners can use to address in-

fringement without going to the considerable

time and expense associated with traditional

trademark enforcement strategies.

The most important thing, when first confronting

a trademark issue created in a social media net-

work, is not to overreact. Just because someone

includes your company’s name or brand in a

Facebook post or Twitter message (k nown as a

“tweet”) does not mean you need to send that

person a cease and desist letter threatening to

bring suit. Even in instances where litigation

might be warranted, a company should think

twice before suing their biggest fans – news of a

lawsuit could bring bad press.

In many cases, threats may not be necessary. For

example, when Coca-Cola discovered that a

Coca-Cola Facebook page started by two fans

had obtained millions of other fans, it contacted

the two initiators and agreed to partner in the

management of the Coca-Cola Facebook page.

The page has since grown to be one of the most

popular pages on Facebook.

Step two: Be proactive

Companies not yet familiar with social media

networks should take the time to become famil-

iar with these sites, and to consider how they can

protect their brands. Since third parties can se-

cure account names or “vanity URLs” through so-

cial network websites (

www.facebook.com/mybest

brand

, for example), companies should identify

the account names (and even defensive account

names) they want to obtain through the sites be-

fore they are obtained by third parties.

A company that is set to release a new key prod-

uct, for example, might consider creating both a

One aspect of Web 2.0 (a term often used to refer

to the new features and interactivity available on

the Internet today) is the growing popularity of

social networking websites like Facebook,

YouTube and Twitter, which allow content sharing

and online interaction between individuals. These

sites can also allow brands to interact directly

with consumers presenting an incomparable

branding opportunity. But, with every opportuni-

ty there are risks, particularly from a trademark

protection standpoint. Having consumers com-

municate about brands is a benefit for compa-

nies; but what if consumers engage in unautho-

rized trademark use? A company is unlikely to be

pleased if a Facebook user obtains a Facebook

URL that contains its mark (

www.facebook/com/

yourmark

) or a Twitter account with the company

name (

www.twitter.com/yourbrand

).

The five steps outlined below can help brand

owners protect their marks on social networking

sites so they can continue to leverage the power

of these networks with some peace of mind.

Step one: Don’t panic

When confronting new media, companies often

presume that trademark problems caused by the

media are as new as the media itself. Generally,

however, while the media may be new, the prob-

lem is not. In the case of a user account on

Facebook that appears to be your brand  but re-

ally is not  this may be a straightforward issue of

trademark infringement. The question then be-

comes: what tool in a company’s arsenal should

be used to combat the problem?

It may be possible to bring a trademark infringe-

ment lawsuit based on a likelihood of confusion;

or simply to send a cease and desist letter.

However, most social networking websites offer