How much would it hurt your business to lose your Facebook or Shopify store, your Twitter handle, or your Amazon Brand registration? Today, more than ever, these secondary platforms define success or failure for an e-commerce or direct-to-consumer (DTC) business. Intellectual property (IP) law is here to help – and in some surprising ways. You may have more options than you realize to secure, or in some cases reclaim, these important assets. New platforms seem to arise on a regular basis, so even diligent companies need a social media enforcement strategy to protect key brands.
Why is it important for brand owners to protect and enforce their brand(s) online?
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.
This legal update was created by Ulmer & Berne LLP, and is not intended as a substitute for professional legal advice. Receipt of this article, by itself, does not create an attorney client relationship. For any questions, or for further information, please contact Vance V. VanDrake, III at firstname.lastname@example.org or Hillary Maynard at email@example.com.