Leveraging Social Media Analytics to Demonstrate a Trademark’s Acquired Distinctiveness or Fame

In the United States, the U.S. Patent and Trademark Office (USPTO), the Trademark Trial and Appeal Board (TTAB), and the federal courts routinely recognize social media statistics as evidence supporting the strength or fame of a trademark. However, while context for such evidence is generally needed for it to be persuasive, trademark owners rarely provide it. The U.S. Subcommittee of the Famous and Well-Known Marks Committee explored the impact of social media evidence in a 2019 INTA Bulletin article.

Here, the Subcommittee presents its research on the current landscape with respect to the persuasiveness of social media analytics, how to obtain this information from free and paid sources, and why trademark owners should provide context for such evidence before the USPTO, the TTAB, and the federal courts.

Presenting Social Media Analytics in Context

The TTAB and federal court decisions, combined with the prosecution history of trademark applications filed with the USPTO, demonstrate that trademark owners frequently provide social media statistics in support of claims of fame and acquired distinctiveness under Section 2(f) of the Lanham Act. But they rarely provide context for these statistics even though these tribunals request it.

More specifically, trademark owners will often present evidence, including social media pages bearing the trademark, that has garnered a certain amount of likes or follows, and declarations attesting to such information. However, they generally stop there. The tribunal concerned may simply find this evidence persuasive along with other evidence, like advertising expenditures, sales, and unsolicited media coverage. If the applicant submits this information to the USPTO, the more likely scenario is that it will issue an Office Action asking for context for such evidence, or, in the case of the TTAB or a court, it may not find in favor of the party submitting the evidence.

The context requested from these tribunals tends to include the following:

• In what country do the likes and follows originate? If a substantial number of likes and follows are not from consumers in the United States, the USPTO, the TTAB, and the federal courts will generally consider this evidence to be irrelevant.
• How do these statistics compare to the number of likes and follows on competitors’ social media pages?
• How long do consumers usually spend on the trademark owner’s social media pages?
• How much do consumers who like or follow a page engage with the social media content on the page?
• What is the growth of the brand’s social media presence and audience over time?
• What are the statistics on specific hashtags that are used in connection with a brand?
• How do the trademark owner’s sales compare with the size of its social media following?

For example, in April 2020, Minky Couture, which makes blankets using “minky” fabric, applied to register MINKY COUTURE, which the USPTO rejected on the basis of descriptiveness. While the TTAB reversed this decision and granted a registration based on acquired distinctiveness, it accorded little if any weight to Minky Couture’s social media evidence of the number of likes or followers, stating that, ideally, the applicant should have put the social media evidence into context. In re Minky Couture, Serial No. 87589711 (TTAB Apr. 2, 2020). The TTAB also stated, “We are not convinced that simply because someone follows or ‘likes’ a social media platform, they are a potential consumer.”

Toymaker Melissa & Doug applied to register the red oval with a white border portion of its logo, usually used as a background behind the words “Melissa & Doug.” The company tried to overcome a possible refusal by providing evidence consisting of its social media pages. However, the TTAB held that Melissa & Doug’s social media presence was “not that impressive,” with 146,000 Instagram followers and 320,000 Facebook followers, and its sales volume was disproportionate to its social media following. In re Melissa & Doug, Serial No. 87915069 (TTAB Jan. 8, 2021). However, in Jenny Yoo Collection, Inc. v. Essense of Australia, Inc., 2019 WL 2717167 (D. Kan. 2019), the bridal dressmaker’s 84,800 Instagram followers and 17,046 Facebook followers—along with other factors—was enough for the TTAB to “support an inference” that Yoo’s trade dress had achieved secondary meaning.

In another case, Vital Pharms., Inc. v. Monster Energy Co., 472 F. Supp. 3d 1237 (S.D. Fla. 2020), where the company behind Bang energy drinks provided proof that its social media network “spans hundreds of thousands of followers and reaches over 230 million people worldwide,” the company’s size was so undeniably large that no context was needed. The court replied that given this reach, Bang had “a significant opportunity to influence the minds of consumers” and had acquired secondary meaning.

In the case of Gavrieli Brands LLC v. Soto Massini (U.S.) Corp., C.A. No. 18-462 (MN) (D. Del. Mar. 24, 2020), a jury ruled in favor of Gavrieli Brands, the maker of Tieks ballet flats, awarding it US $2.95 million in a trade dress and patent infringement dispute over the shoes’ signature blue soles. Since the complaint centered around the blue color of Tieks’ soles, the plaintiff provided evidence showing heavy use of relevant “look for” hashtags like #BluePrints alongside #Tieks on social media. Gavrieli also put significant emphasis on the social media presence of Tieks, as well as a context for this presence with respect to competitors. It claimed the brand has “one of the largest social media followings in the fashion world, with over one million followers on Facebook.”

Social Media Analytics

Social media analytics measure data from social networks to determine the performance of marketing campaigns, understand the demographics of consumers, and develop business and marketing strategies. They can support a claim that a trademark has acquired distinctiveness or fame.

Beyond baseline data, like the number of “likes” of a Facebook post or “retweets” a Twitter post receives, the amount of information gathered may be astonishing to some. For instance, Meta’s brand, FACEBOOK, gathers the following information:

• Age, gender, marital status, next of kin, work history, etc., of the audience engaging with the brand owner’s content;
• Metadata from uploaded pictures;
• People, pages, accounts, hashtags, or groups users are connected to;
• Types of content users engage with and the frequency, time, and duration of the engagement;
• Audience purchases made through a brand owner’s Facebook ad or post;
• Device information, like hardware information, operating systems, IP (Internet protocol) address, cookies, and time zone; and
• Information received from third-party applications that use Facebook integration.

Through free and paid options, users can view most of this collected data for a variety of platforms—Facebook, Instagram, and Twitter being the most popular. A Google search for “how to view analytics on [social media platform]” will point users in the right direction.

Some platforms allow a profile owner to see basic demographic information for free. For example, on a Facebook business page, found by navigating to INSIGHTS > PEOPLE, users can see a breakdown of fans by age, gender, country, city, and native language.

Instagram Insights allows owners of business and creator accounts to obtain free metrics on trends across followers and content performance, including for specific posts, and Instagram Stories, Videos, Reels, and Live Videos. Professional account holders also have access to accounts reached, accounts engaged, total followers, the number of followers gained and lost, and approximate earnings for a certain time period. These analytics are based on aggregated user demographic data, including top countries, top cities, top age ranges, and gender breakdowns.

A paid third-party resource or a court subpoena is likely necessary to gain access to more detailed information and information on competitors. Third-party companies track similar social media data, like impressions, user engagement, geographic location, and demographics, but also offer unique features, including:

1. BuzzSumo and TapInfluence

• Primarily used for companies that use influencer marketing; and
• Provides insights to generate content ideas, create high-performing content, monitor content performance, and identify influencers.

2. HootSuite

• The most widely used social media marketing platform; and
• Provides analytics showing a 360-degree view of a brand’s social media presence.

3. Keyhole

• Monitors what people are saying about your brand in real-time; and
• Provides analytics on influencer campaigns.

4. SproutSocial

• Provides a high-level overview of a brand’s social media presence; and
• Compares social media performance to competitors’ performances.

Other resources include Clarabridge, NetBase, and Relative Insight.

Other Analytics Sources to Consider

Google Analytics is a powerful free tool that measures website activity like traffic, referral sources, demographics of visitors, search terms used to find the website, clicks from ads, and much more. It also allows businesses to access and create reports for social media analytics, including marketing campaigns. Website data could be just as persuasive as social media analytics since Google has a larger reach than most social media websites and collects a vast amount of information on its users.

Like social media analytics, this data should be submitted in context. Website-specific context could include the following:

• Keywords that visitors searched to find the website;
• The sponsored Google ads that visitors clicked on before purchasing an item from the associated website; and
• Website visitors compared to sales closed on the website.

Conclusion

Social media analytics data is available from a number of sources and can support a claim of fame or acquired distinctiveness. However, trademark owners should consider providing the context for such evidence. While the USPTO, the TTAB, and federal courts may find this evidence persuasive when accompanied by other traditional forms of evidence, such as advertising expenditures, sales, and unsolicited media coverage, social media evidence on its own without context as to what that evidence represents and how it fits within the competitive landscape is unlikely to persuade them.

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

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