Enforcement Committee Issues Best Practice Guides on Online Trademark Infringement

Published: October 1, 2019

Kathleen E. Brennan The Brennan Law Group, LLC, River Forest, Illinois, USA

INTA’s Enforcement Committee’s Online Dispute Resolution (ODR) task force has created two best practices documents for brand owners and platforms to consider in addressing online trademark infringements posted by third-party users. The ODR task force (which includes volunteers from various INTA committees) designed these guides to create more uniform notice and takedown procedures, which in turn enable speedier and more satisfactory outcomes for both platforms and trademark owners.

Members of the ODR task force reviewed reporting procedures for trademark infringements as well as the Digital Millennium Copyright Act (DMCA) regarding 13 of the most popular platforms that host third-party content. They then cross-referenced survey results from selected INTA members in order to gain insight on how existing reporting procedures are working for brand owners and online intermediaries, and whether protections such as those found in the DMCA might be desirable for addressing online trademark infringements.

Based on this research, the ODR task force identified and compiled effective, streamlined, and user-friendly practices for platform hosts in a guide titled Online Trademark Infringement: Best Practices for Platforms Hosting User-Generated Content. Similarly, Online Trademark Infringement: Best Practices for Brand Owners provides suggestions for rights owners to more effectively report and communicate with websites and social media platforms about the infringement of user-generated content on these sites.

The ODR task force originally prepared these documents as part of a project to research, report, and provide a recommendation as to whether a law analogous to the DMCA would benefit trademark owners. While the task force did not ultimately recommend a DMTA (Digital Millennium Trademark Act), the best practices work products stand on their own as useful guides for platforms and trademark owners.

The ODR task force is now studying online dispute resolution as an efficient, cost-effective, and voluntary means for parties to resolve trademark disputes that may be too complicated for platforms to simply resolve upon notice, but which may not be sufficiently complicated to require resolution by the courts.

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.

© 2019 International Trademark Association