By: Dunlap Bennett & Ludwig [8/13/22]

We regularly receive calls from clients who have seen unauthorized use of their trademark or business name on the internet or social media. Given the billions of consumers using various social media outlets, trademark infringement has become an ever-increasing problem on these platforms. When you see possible infringement of your trademark, you should review the infringement and speak with an attorney about your options for pursuing the infringing party. However, generally, we believe there are at least four steps you can take to determine if enforcing your rights on the internet is a viable option.

Step One: Identify the other party

As an initial step, you should first identify the infringing party and determine the scope of their use of the mark. Additionally, you should determine if the other party owns a registered trademark. Since social media is technically open across the country, any use on social media could be considered an infringement of a national right to use the trademark. Additionally, if you do not have a registered trademark, you should research to determine who began using the mark first.

Step Two: Determine the Senior User

When dealing with trademark infringement, the first thing to consider is who is the senior user of the trademark. This means the party that was using the mark in commerce first is technically considered the senior user of the trademark and entitled to keep junior users from adopting a mark that may be confusingly similar. If you are the senior user, then you may be entitled to enforce your rights against the party using your trademark without permission.

Step Three: Review specific outlets for internal takedown procedures

Social media and other internet outlets usually have specific procedures in place to enforce trademark rights. Amazon, for example, has their own takedown procedures for instituting trademark or copyright complaints through their platform. Amazon also has a Brand Registry program, which allows for trademark owners to enforce their trademark rights through Amazon’s propriety platform. Additionally, social media outlets such as Facebook and Instagram have their own internal takedown procedures available for trademark owners. Using the proprietary programs for each individual outlet is usually the best place to begin your enforcement efforts.

However, based on our experience, if your trademark is not registered, or is registered on the Supplemental Register, then your ability to enforce your rights on the internet may be severely impacted. Many social media companies do not acknowledge a Supplemental trademark registration as basis for filing a takedown request. Additionally, many of these outlets do not accept trademark claims for unregistered trademarks. In the event the social media or internet companies will not assist, then you need to consider alternate routes for enforcement.

Step Four: What to do if internal procedures are not viable options or unavailable

The next option to enforce your rights on the internet is to send a cease-and-desist letter directly to the user that is potentially infringing on your trademark. Alternatively, if the person has their information hidden, or the website does not provide an internal take-down procedure, then you should send a letter or email directly to the company in question requesting they cease and desist. In the event these avenues are not successful, the next step would be instituting a lawsuit against the party in question.

Any lawsuits involving trademarks and trademark infringement are typically brought under the Lanham Act before a federal district court. If the dispute is truly local, within the same state, then you may elect to bring suit within a state court, but either party may move to have the case removed to a federal court. It should be noted trademark infringement litigation is very expensive, time-consuming, and comes with many uncertainties.

Conclusion

In closing, enforcing trademarks on the internet has become highly important given the proliferation of the internet and social media. However, enforcing your rights in a trademark is a duty of the trademark owner and should be taken very seriously in the event of potential infringement. If you have found your trademark being used without your authorization on the internet or social media, you should speak with an experienced attorney to discuss your options and considerations for enforcement of your rights.

Dunlap Bennett & Ludwig’s trademark infringement attorneys and false advertising litigation team have substantial experience litigating and resolving trademark disputes in many contexts and industries. For more information on how Dunlap Bennett & Ludwig can help you with your legal needs, contact us by calling 800-747-9354 or emailing clientservices@dbllawyers.com.


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Posted in: Intellectual Property - Trademarks

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