INTA Bulletin

December 15, 2016 Vol. 71 No. 21 Back to Bulletin Main Page

In-House Practitioners Idea Exchange: E-Commerce Trademark and Brand Protection Strategies for In-House Practitioners

A diverse group of INTA corporate in-house members from various countries and industries participated in the teleconference. Heidi Belongia, Senior Counsel Intellectual Property for Kohl’s Department Stores, Inc., Angela T. Isabell, Assistant General Counsel for the Council of Better Business Bureaus Inc., and Shelley Jones, Senior Legal Counsel, Trademarks & Brand Enforcement for BlackBerry Limited, were the moderators for the sessions. This article provides a general overview of the issues discussed and the experience encountered by a number of participants in the session, but does not identify any individual or corporate views discussed during these two Idea Exchange sessions.


When asked if trademark issues in e-commerce are treated any differently than those found in brick and mortar stores, the majority of participants indicated that there is no differentiation based on the platform. Many expressed that their expectations and experiences in terms of enforcement was that issues in e-commerce required faster action and had faster resolutions, especially with the takedown procedures in place by various entities. In addition, they found that their clients expressed more anxiety about the implications for their brand and the ramifications of actions taken when it involved e-commerce. They also felt that it was like playing a losing game of whack-a-mole because as soon as one issue was taken care of, three more arose to take its place.

Clearance Strategies

Participants were asked if they treated the clearance process for a slogan meant for an in-store sign differently than when that slogan is used on a website. Many agreed that the approach is not much different when clearing a mark that is going to be on a website or on or in connection with brick and mortar. A number of factors are taken into consideration, such as the level of risk, duration, and extent of use. Some of the most common questions are: How quickly can the mark be removed? How expensive would it be to remove it? What kind of disruption level will it create for the business? They also weigh the risk of how easily marketing materials can be pulled back, the cost to reprint such materials, and how fast they can get materials back from distributors. “If distributors continue to use these materials, we continue to be exposed to a lawsuit,” said one participant.

Risk Assessment

When it comes to risk assessment, participants found that because e-commerce is more public, they have been a bit more conservative in how they approach infringements. For example, they might scope out the prominence of the infringing matter and investigate how long it has been active and how much traffic the site gets. Because takedown notices and other cease and desist communications are likely to become public, the public relations aspects needed to be taken into account. Letters are very carefully prepared to be amicable and thoughtful due to the expectation that it will be made public. Therefore, counsel will often work with their communications team or social media team before sending cease and desist communications. In jurisdictions in which the company is only present online, the consensus was that due to limited budgets, prioritizing the most important items for the business was most important, and the strategy was set jointly by the legal and marketing groups.


With respect to counterfeit goods, some companies used a third-party service provider for online takedowns, and some filed certificates of registration with customs in various countries. Most found it to be a labor intensive process and continually look for ways to make it less labor intensive internally. Several use a third-party provider to monitor online trading platforms and use another party to separately monitor applications and registrations.

“When dealing with counterfeits, we have a zero tolerance policy whether online or in the market, and we take a very aggressive approach,” said one participant on the call. When the counterfeit is on an e-commerce site, some in-house teams deal directly with the platform. Others in the pharmaceutical industry find it effective to turn to a regulatory agency (like the FDA) and have the agency go after the counterfeit product.

The group then turned their attention to trademark concerns related to affiliate networks. When the marketing team has third parties that are allowed to use their marks and logos, working with the marketing team to manage enforcement is important. There are also a number of third-party providers specializing in affiliate network monitoring which assists by monitoring who is bidding on your key words and platforms.

When it comes to typo squatting, some participants noted that it’s a bit of a struggle with the business team because they want to go after everyone. From a resources perspective that doesn’t always make sense, so they need to evaluate the traffic on that site. However, if it’s a major launch or if someone takes traffic away, they will often take action. Others have taken an approach to let those typo squatting issues go now that searches have changed the landscape.

With respect to online scams and enforcement, participants pursued fraudulent sites with similar names because of the effect on the reputation and credibility of the company, its products, and services.

One strategy for online takedowns shared with the group was the use of copyright registrations. “A lot of unauthorized sellers are taking legitimate photos from legitimate websites and listing them as a legitimate product when they are not,” explained one participant. “Although a copyright registration for images is recommended, for U.S.-based e-commerce platforms you don’t need to register your copyright. Just send them a link of the copyrighted image and they will verify the original source. For other international marketplaces it is recommended that you have a federal registration,” expressed another participant on the call.

In the App World

Discussion then turned to when a third party is using your name and creating an app. Many participants found that it takes four to eight weeks to get the platform/company to pull it down. Third-party services that work across various platforms and have relationships with big app stores have had success getting blatant issues responded to quickly. There are also third-party services that assist with domain enforcement. They scan the app platforms for potential infringing apps and then the brand owner instructs who to go after. While it can be part of the domain enforcement package with a third party, 99 percent do all that work in-house and find it very time consuming.

Truth in Advertising

When it comes to truth in advertising issues, it was a mix between trademark counsel and marketing counsel handling those issues. Often there is a full team in place to address the review process, including documentation to support substantiation claims.

The Legal Team and Social Media

Many participants indicated that they have brand guidelines which are provided to various business units, including corporate communications. The legal team works closely with the brand marketing and licensing departments to ensure conformance to the guidelines. Often the business unit will contact the third-party licensee to address brand guideline issues.

With respect to social media, the group was asked whether they review and clear content before it is posted by their organization. It was a mixed response which included use of the guidelines developed by their department by the media and PR departments. “We were seeing everything and that wasn’t working,” said one of the participants on the call. Some industries have the resources to vet social content. They look at the language, references, photos, footage, use, etc., but agree that it is voluminous. The group noted that the business units were mostly monitoring social media matters. Some have separate departments that handle monitoring.

When working with bloggers and endorsers, some in-house teams provide a one pager with guidelines on how to use trademarks properly, but do not provide a lot of detail. “We have disclosures in place and expect them to comply with company standards, but the legal team does not review content,” said one participant on the call.

How to Quantify Success to Senior Management

Companies are actually looking at the number of takedowns on e-commerce platforms as a measure of success. Some legal teams only monitor four major Chinese websites. Some factor in a change in sales when they see an increase in the purchase of original equipment rather than counterfeits or resales. “Sometimes it’s more of a listing improvement campaign rather than a removal,” said one participant on the call. All agreed that improved listing is a good thing because there is less consumer confusion but are not sure what the competitive impact is.

Other participants on the call quantify success based on the number of shipments being stopped at customs or the number of seizures that have taken place.


The discussion then turned to gTLDs, which everyone recognized could be the topic of a separate Idea Exchange session. Generally, the participants in these sessions did not register with .brand, however if they did, it was being redirected back to their main site. Many found that it doesn’t fit into their multi-brand strategy, and even when it has been registered, it hasn’t been used often. The participants noted that it was not particularly useful to have the additional registrations when web traffic is being largely driven by key words and meta tags and following the traffic. Some used the Uniform Rapid Suspension System when not interested in actually using the domain because they found it to be cost effective.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2016 International Trademark Association