Trademark Administrators: Enforcers of IP Rights on Social Media and E-Commerce Platforms

The Trademark Administrators Committee welcomed 185 attendees on May 20 to the annual Trademark Administrators Brunch during the 2018 INTA Annual Meeting in Seattle, Washington. A diverse group of in-house and law firm intellectual property (IP) professionals enjoyed an informative and valuable event where panelists shared useful insights and tips on how to best utilize social media and e-commerce platforms to enforce IP rights.

Takedown Methods
Social media and e-commerce platforms provide policies and takedown mechanisms for brand owners to use that are straightforward and easy to use. In addition to online social media or e-commerce takedowns, brand owners may opt to send a cease and desist (C&D) or a demand letter. Even though C&D letters take more time and effort, and there is possibly the added expense of outside counsel, they give you the ability to tell your story a little bit better; you can customize them, add exhibits, and fill in the gaps that otherwise would be left out when using the online takedown requests provided by the platforms. Whether to bring a lawsuit will depend on the circumstances of the situation, including the danger of the infringement.

Approaching Online Takedown Requests
Not all platforms are created equal. Whether you are dealing with commercial or social platforms, or entertainment or news platforms, understanding them will help you strategize enforcement efforts. Think revenue, for example. If it’s a popular product, an e-commerce platform may push back. What about popular content? If a social media platform takes it down, users will most likely move to another platform. Another factor to consider is legal liability. If the platform fears legal liability, it may react differently to the takedown request.

Taking a collaborative approach to takedowns can also yield results. Platform owners are not necessarily the bad guys. Platform owners are also IP owners! They understand IP. Trying to establish a contact and developing a relationship with the platform may help to achieve your goal.

Develop a Targeted Strategy
The approach to online trademark infringement will depend on the type of infringement. Do you go after everything or only the most egregious violations? Some brand owners take a balanced approach to enforcement efforts and are not too overreaching. But what happens when trademark teams don’t have a lot of resources? Do you outsource? Having a strategy in place and managing this strategy based on your resources will translate into a proactive approach. Developing a big-picture enforcement strategy will help target your efforts to support your business.

These four principles will help you develop a strategy when considering a takedown request:

1. Impact on revenue;
2. Your business’s ability to market;
3. Protection of your brand, your brand’s reputation, and its value;
4. Protection of consumers against any harm.

Brand prioritization is a fantastic tool when designing a strategy-think top-tier brands, followed by products and services, and then other initiatives.

Many brand owners want to make sure they are not overreaching. For example, taking down fan accounts may have a negative impact; taking down bloggers may trigger public relations issues; and there’s a risk of taking down the brand owner’s own legitimate accounts.

The bottom line for brand owners and platforms alike is to protect consumers against fraud and counterfeit or faulty products.

To learn more about this and many other relevant topics, please join the 2018 Trademark Administrations and Practitioners (TMAP) Meeting in Orlando, Florida, September 12-14, 2018.

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. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2018 International Trademark Association