Controlling Your Brand in the Age of Social Media

Before your brand embarks on social media marketing, ensure that it heeds the lessons learned by others that have gone before it, and engage an experienced trademark lawyer to help navigate the many nuances of brand protection in the digital age.

Controlling Your Brand in the Age of Social MediaTrademark protection has never been more important than in today’s increasingly global economy. A company’s name, trademark or service mark, trade dress and website domain name are often its most important and valuable assets, and this applies as well to companies with lesser-known brands since social media has provided them with a platform to reach a worldwide audience. But even companies with well-known brands use social media as a tool to manage their brands’ image and engage with customers directly. In a borderless world economy, brands simply must utilize social media to remain competitive.

The following are four tips to keep in mind before embarking on a social media strategy.

Don’t wait—the benefits are far too great

There are many effective ways to engage with brand followers, and attract new ones, through social media. Social media engagement can be informative, by sharing valuable content about the brand or telling its story. It can also be promotional, by offering discounts, coupons, deals and other promotions designed to capture more market share. Social media can be an interactive tool for conversing with customers or forging a relationship with potential customers that ends in brand investment.  Social media also provides an opportunity to create goodwill by enabling a brand to provide an immediate response to a customer inquiry. But it has also created an expectation of immediate, responsive service, so a company should be sure it has the tools in place to keep up with social media’s fast pace before splashing its brand in front of huge numbers of people. More importantly, create a clear and consistent voice and message for the brand that reflects its desired image and resonates with the target customer group. Brands that have found the right people to create these voices have struck gold, their brand “personas” becoming well-known and their quick quips going viral.

Last year, for example, Wendy’s Twitter account broke the Internet with its sassy clapbacks to criticisms from customers and other Twitter users. The Twitterverse was so impressed with Wendy’s ability to give as good as it got, that it demanded to know who was behind the award-worthy tweets. The company eventually identified its ghost-tweeter, hailing her for her witty and creative responses on its behalf, garnering some free publicity for giving credit where due and professional plaudits for employing a unique, hip, entertaining and savvy voice to help promote its brand. The outed employee, by the way, was also credited with authoring some of Wendy’s high-profile tweets of 2016 involving the brand’s “beef” with Burger King.

Consider protecting your hashtags

Social media marketing does not have to be limited to use the brand’s core trademarks. A brand may also explore short- or long-term marketing campaigns under the umbrella of unique hashtag slogan (i.e., a slogan preceded by the symbol #, commonly known as number, hash or pound sign). Hashtags are often used in social networking sites to identify or facilitate searches for trending topics, topic of interests or key words. A hashtag slogan is protectable as a trademark and a brand can even file an application for registration in the US Patent and Trademark Office if the hashtag slogan serves as a source identifier for the brand’s goods or services.

The hashtag slogan cannot merely be used as a mechanism for organizing keywords or subject matter to facilitate searching for a topic, and the addition of a hashtag symbol to an otherwise unregistrable mark (e.g., one that is merely descriptive or generic) cannot render it registrable. For example, #Skiing for ski equipment would be refused since it merely describes the purpose or feature of the goods. However #BornToSki may be registrable for ski equipment since the hashtag is combined with wording that is neither a descriptive or generic term for the goods. This presumes that the use is not merely on the brand’s social media pages and that there is an acceptable specimen of use of the mark, such as on the product, its packaging, labels, tags or point-of sale materials.  Also, a clearance search should be done first to ensure that no other party is using or has sought to register the slogan contained in the hashtag for services that are similar or related to those of the brand.

Register and monitor your brand on social media platforms

As a preliminary step, brands should register their company name, trademarks and slogans on all desired social media platforms. Most major brands register on at least Facebook, Twitter, Instagram and Pinterest. Not owning these major social media handles puts the company and brands at risk. Generally, brands can avail themselves of online complaint procedures to help in their policing strategy. All of the major social media platforms have procedures for requesting the removal of infringing material posted on their sites. At a minimum, the platforms’ complaint forms require the brand to enter certain key information relating to the trademark, the trademark owner’s contact information and a link to the infringing content. Providing proof of federal trademark registration often expedites the removal of infringing material, making the whole process fairly quick and painless, but is no guarantee of removal.

Registering a brand on social media platforms is not enough to ensure that one’s rights are preserved. The sites should also be monitored so that all rights can be enforced as well. It’s not enough to hold a trademark registration; to retain one’s rights, the owner has an affirmative duty to police and enforce the trademark, and failure to do so could be interpreted as abandonment resulting in loss of the trademark. In other words, owners are required to identify potential infringements and take appropriate action against infringers.

For smaller scale companies with lesser-known brands, this function can be undertaken by an employee or a handful of employees in the marketing department. Mid-size or larger companies with better-known brands should consider retaining outside counsel to monitor social media platforms for infringements and take action as needed to preserve the owner’s rights. There are also companies that specialize in searching for potential infringers on social media. When they identify an infringer, they turn the matter over to an attorney to communicate with the infringer and to resolve the matter.

It’s worth noting that just as it is imperative to register one’s trademarks on the major social media pages, it is also vital to do so on the websites of the larger online retailers. There has been a sharp rise in unauthorized third-parties selling products under infringing trademarks, or attempting to sell counterfeit products, on Amazon’s website (see here, here and here)

Not all infringements should be treated equally

While brands must police their trademarks or run the risk of weakening the scope of protection afforded to them and an associated decrease in their value, not all infringements should be treated equally. The last few years have seen an uptick in funny, creative or thought-provoking cease-and-desist letters sent to would-be infringers. Not only have the letters gone viral, but the recipients’ responses and the public’s reaction have gone viral as well—a win-win-win. On the other hand, sending a boilerplate cease-and-desist letter to any and all infringers of a client’s trademark, especially if it is a well-known brand that has smaller, lesser-known brands nipping at its heels, can have the opposite effect. Social media has undoubtedly become a factor in whether to send a cease-and-desist letter and the tone and tenor of such a letter. Each infringement warrants its own analysis. Not only should the merits of the infringement be considered, but also who the infringer is, the scope of the infringement and the potential blowback from sending a demand letter. Brands need to have general guidelines that outline the extent to which they may be willing to live with a minor, or sporadic unauthorized use of the brand’s trademarks or hashtags.

If one decides to send a demand letter, it should be crafted in a way that protects the brand image. While in the past such matters were likely to be hashed out in private, in the age of Social Media, recipients of demand letters (especially if they are a David and the sender is a Goliath) are apt to post them on social media for all the world to see. This creates the unique situation where the general public and those invested in the brand become part of a story and the media will write the ending. A demand that is sent without regard to the size of the target or the scope of the infringement (e.g., lesser offenses probably warrant a proportionate response) could result in a backlash to the brand. Conversely, a carefully crafted, creative demand letter can build positive sentiment among current brand followers, win over a legion of new fans, and provide an opportunity to capitalize on new brand awareness.

Last year, Netflix’s legal team sent the operators of a pop-up bar fashioned after Netflix’s cultural phenomenon Stranger Things what the public considered to be a nerdy, yet classy, cease-and-desist letter. To get the temporary pop-up to shutter its doors, Netflix’s attorneys penned (and published) a letter that employed the series’ jargon, tone and cultural references. Not only did it accomplish its goal, but the streaming service gained legions of fans for its proportionate response to the short-lived infringement celebrating its series. Netflix’s tactful employment of the carefully worded cease-and-desist ensured that neither its corporate brand or the series’ image was tarnished.

Before your brand embarks on social media marketing, ensure that it heeds the lessons learned by others that have gone before it, and engage an experienced trademark lawyer to help navigate the many nuances of brand protection in the digital age.

The Author

Tara Reedy Sliva

Tara Reedy Sliva is an Attorney with Dentons, where she helps clients focused on domestic or international brand expansion, to develop, grow and protect all types of brands and other intellectual property. Tara regularly interacts with and directs local counsel in more than 100 jurisdictions helping to protect and extend her client’s rights across the globe. Tara's practice also encompasses the acquisition, maintenance, licensing, enforcement and transfer of intellectual property. Her emphasis comprises all aspects of copyright and trademark matters, including strategic counseling; selection, adoption and use of trademarks; domestic and international trademark prosecution; portfolio management and enforcement, including opposition and cancellation proceedings in the United States Patent and Trademark Office (USPTO); and ICANN domain name disputes.

For more information or to contact Tara, please visit her Firm Profile Page.

Tara Reedy Sliva

Shari Klevens is a partner and the co-chair of the global Insurance sector team at Dentons. She is also a member of the Firm's leadership team, serving on its US board of directors. Additionally, Shari is active in Dentons' women's initiative and served as chair of the legacy McKenna Long & Aldridge Women’s Steering Committee.

She is a lawyer to whom clients turn when they need an aggressive but practical approach to difficult matters, and her clients rely on her to create and implement an successful strategy, whether they are bringing, defending or avoiding litigation.

For more information or to contact Shari, please visit her Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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