Famous and Well-Known Marks Committee Explores the Impact of Social Media Evidence on U.S. Trademarks

Published: September 15, 2019

Jocelyn Hanamirian The Walt Disney Company Burbank, California, USA

The pervasiveness of social media continues to grow, and has now extended to the realm of intellectual property. With this in mind, the Famous and Well-Known Marks Committee, European and Central Asia Subcommittee, and the United States Subcommittee have collaborated on this two-part, regional perspective explaining how to submit evidence of social media usage to prove fame to courts and to administrative tribunals.

Part 1 of the series, published in the September 1 INTA Bulletin, provides a perspective from the European Union. Here, Part 2 of the series provides a perspective from the United States.

Today, a robust social media presence is a key part of a company’s marketing strategy. Increasingly, the challenge of measuring the impact of clicks, likes, and follows falls not just to marketing and analytics teams but also to trademark practitioners, as they advocate for a brand’s strength and fame in the marketplace.

A survey of U.S. Trademark Trial and Appeal Board (TTAB or Board) decisions, as well as U.S. federal and state court decisions, revealed that U.S. tribunals routinely recognize social media statistics as evidence of the strength or fame of a brand. At the same time, there are challenges to effectively harnessing this evidence.

U.S. tribunals recognize social media profiles and posts as evidence of the fame of a trademark, both within the context of a trademark infringement claim’s likelihood of confusion analysis (as evidence of the commercial strength of a mark and/or the marketing channels used to promote the mark), as well as within the context of dilution claims, as evidence of the duration, extent, and geographic reach of advertising and publicity of the mark.

As the U.S. Court of Appeals for the Sixth Circuit put it, “Promotion on platforms such as Twitter and Facebook not only constitutes marketing, but is among the most popular and effective advertising strategies today.” Kibler v. Hall, 843 F.3d 1068, 1075 (6th Cir. 2016) (finding the district court erred when it failed to consider plaintiff’s social media marketing evidence of commercial strength of plaintiff’s mark).

It is difficult to draw a conclusion as to the value of social media evidence per se, in part because evidence of a mark’s exposure through social media is most often only one component of a larger evidentiary submission on the fame of a mark, along with sales and advertising figures. Certainly, the fact that a brand has earned a substantial consumer following on social media can be a valuable piece of the puzzle.

For example, in recent TTAB decisions concerning the opposers’ marks CHANEL, GUCCI, and MARGARITAVILLE, the Board cited the number of the brands’ social media followers and webpage visits as evidence of the fame of the marks, alongside other significant evidence of fame. Chanel, Inc. v. Makarczyk, 110 USPQ2D (BNA) 2013, 2020 (Trademark Trial & App. Bd. May 27, 2014) (noting that the opposer’s CHANEL mark had more than 9.5 million Facebook fans, approximately 40 million views of its YouTube channel content, and ranked as the number one shared fashion brand on Pinterest); Gucci Am, Inc. v. UGP, LLC, 2018 TTAB LEXIS 241, *13 (Trademark Trial & App. Bd. July 13, 2018) (non-precedential decision) (noting that the opposer’s GUCCI mark had “almost 4.9 million Twitter followers, 17.4 million Instagram followers, almost 16 million Facebook followers, and has received over 16.2 million Facebook ‘likes.'”); Margaritaville Enters., LLC v. Bevis, 2017 TTAB LEXIS 108, *15 (Trademark Trial & App. Bd. Mar. 16, 2017) (non-precedential decision) (noting that the social media presence of the MARGARITAVILLE brand has expanded consumer exposure to the brand).

In one notable federal case, the Museum of Modern Art in New York (MoMA) obtained an order preliminarily enjoining a defendant art gallery and café from use of the mark MOMACHA, demonstrating a likelihood of success on the merits of its dilution claim with evidence of fame of the MoMA mark that included not only more traditional metrics, such as museum attendance figures and merchandise sales, but also statistics such as the volume of unique visitors to MoMA’s website (more than 13 million) and MoMA’s social media following (more than 5.5 million followers on Twitter, 3.4 million on Instagram, and 1.96 million on Facebook). Museum of Modern Art v. MOMACHA IP LLC, 339 F. Supp. 3d 361, 369, 381 (S.D.N.Y. 2018).

If the subject mark is displayed within a brand’s social media account, the Federal Circuit has suggested that this is sufficient to show that consumers who follow that social media account are exposed to the mark. See Omaha Steaks Int’l v. Greater Omaha Packing Co., 908 F.3d 1315, 1321 (Fed. Cir. 2018) (“In light of the direct overlap between the company’s name and its marks, it is undisputed that an Omaha Steaks ad involved either its registered tradename, ‘OMAHA STEAKS,’ or one of its registered trademarks displaying that name.”).

Where available, it may be useful to provide further context to supplement raw social media statistics, such as how interactive customers are with a brand on social media, whether a brand has been the subject of significant marketing campaigns leveraging social media, and whether a brand’s social media following has grown over time, telling a larger story about consumer awareness of a mark.

Following the Federal Circuit’s clarification in Omaha Steaks of its holding in Bose Corp. v. QSC Audio Products that evidence of market share is not strictly required to contextualize ad expenditures or sales figures where such figures are not misleading, the TTAB has nevertheless suggested in a footnote to a recent decision that, “the better practice is for the propounding party to introduce testimony and evidence into context so as to remove any doubt [that the figures are misleading] (e.g., the significance of the number of hits that a website may retrieve or the number of followers one has on social media).” Am. Express Mktg. & Dev. Corp. v. Vo, 2018 TTAB LEXIS 447, *10‒12, n.19 (Trademark Trial & App. Bd. Dec. 13, 2018).

In the context of dilution claims, the high degree of fame required can present a further challenge for brand owners, propounding evidence of social media marketing. Interestingly, if a brand characterizes its use of social media as permitting it to target a particular niche of consumer, this may cut in favor of a finding of likelihood of confusion-where a defendant’s mark targets the same niche through the same channels-but it may also undermine a plaintiff’s ability to prove for dilution purposes that it has achieved more than niche fame. Ducks Unlimited, Inc. v. Boondux, LLC, 2017 U.S. Dist. LEXIS 132383, *96‒97, *110‒112 (W.D. Tenn. Aug. 18, 2017) (target consumers shared by parties found to be an overlapping niche audience).

Overall, U.S. tribunals have demonstrated an awareness of the significance of social media statistics. While any one social media statistic is unlikely to be determinative of whether a mark is famous, relative to the strength of a party’s evidentiary submission as a whole, the foregoing illustrates the potential impact that social media evidence can have, on par with any other evidence of marketing or advertising.

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