Be Cautious About Trademark Protection On Social Media
With the expanding reach of social media, companies need to exercise caution when attempting to promote their brands or protect their marks online, according to a panel of intellectual property experts at Corporate Counsels 25th Annual General Counsel Conference.
Speaking on day two of the GC East event, Keith Weltsch, a partner at the intellectual property law firm Scully, Scott, Murphy & Presser, said statutory law surrounding social media is still evolving, and relevant legal remedies available to brand owners are not particularly solid. Trademark law has not changed to reflect changes in the way that commerce is conducted via social media, he said.
Major social media sites, such as Twitter and Facebook, will conduct an investigation into allegations of trademark abuse and may shut down an account or user page if appropriate. But the processes by which they make their decisions are not necessarily transparent, and their policies tend to take a limited view of what constitutes abuse, Weltsch said.
For that reason, brand owners should carefully consider, on a situation-by-situation basis, whether they should try to enforce their mark or just walk away. Its just not feasible from a cost perspective to go after every negative, unauthorized use of a brand, said Peter Bernstein, also a partner at Scully, Scott, Murphy & Presse. An aggressive approach to enforcing your trademark can backfire.
In one highly publicized instance, for example, a Vermont folk artist who built a T-shirt business around the phrase Eat More Kale received a cease-and-desist letter from the fast-food chain Chick-fil-A, saying he was infringing the chains slogan Eat Mor Chickin. The artist, Bo Muller-Moore, decided to fight the company and received a groundswell of support and media attention. His legal representation is offering its services pro bono. A petition on Change.org has been circulated. The governor of Vermont has thrown support behind the artist. And Muller-Moore has posted an Eat More Kale Facebook page.
The Patent and Trademark Office, meanwhile, issued a preliminary no in April to Muller-Moores application to trademark his slogan. But the battle persists, since Muller-Moore has six months to respond to the PTO. And Chick-fil-A has been widely accused of trademark bullying.
Brand owners also make mistakes using social media. McDonalds, for example, began promoting the Twitter hashtag #McDStories in 2012 to encourage people to describe their positive experiences at McDonalds restaurants on the social network. Immediately, users began using #McDStories to bash McDonalds. The company pulled the hashtag campaign within hoursbut Twitter users continued circulating the bashtag.
Despite these and other examples of social media not working in a companys favor, it is still in a companys interest to use Facebook, Twitter, and other social platforms to promote its products, said Leonora Hoicka, associate general counsel for IP at IBM Corporation.
To avoid pitfalls, however, in-house counsel should develop a clear governance model so employees know what is acceptable in the use of social media. They also need to police activity and educate employees about social media usage and how to deal with potential trademark issues they encounter. It might help to have a companys marketing department involved to gauge potential repercussions for both employee activity on social media and various scenarios for responding to trademark violations. You cant go after everyone, she said. But with policies in place, you might be able to avoid trouble.
Companies are often unwilling to give up control of their brand in the public sphere, but once in a while a social media story has a happy ending, Bernstein noted. When Coca-Cola Corporation discovered two Coke fans had created an unauthorized fan page that used the companys mark, for example, it didnt shut it down or take it over: The company decided to collaborate and formed a partnership with the page founders. Coca-Cola did not act like an ogre, but maintained some control, and it turned out to be a win-win situation, Bernstein said.