Posted on Jul 18 by admin.

Social Media and Trademark Law in the 21st Century: Presenting Opportunities and Problems: Part 3

Other Options Available to Trademark Owners

Trademark owners, of course, have other legal options in order to enforce and protect their trademark. They can of course sue under federal trademark law for trademark infringement or unfair competition.

These claims fall squarely under the Lanham Act; however, they may run into another limitation: the statute can be asserted only against those who wrongfully use a trademark "in commerce." This requirement may be met in a social media context, but only if the defendant uses a social media site to sell goods or services. Otherwise, the trademark owner may not be able to make out a Lanham Act claim, which provides for triple damages plus an award of attorney fees, providing a strong disincentive for the would be infringer to not act unlawfully.

The better solution often is to avoid the courts altogether. If some entity is wrongfully using a companyâs trademark on a social media site, the company can complain to the operator of the social media site. Facebook, Twitter, Linkedin and other major social media sites have expressed a willingness to protect trademark owners. However, it is unclear, how the social media companies will handle the complaints, or whether the results will be favorable to the trademark owners.

The best option for trademark owners may be to avoid this trouble at the outset and register their trademarks as usernames on social media sites before anyone else does. That, however, may be easier said than done as many of these names may already be in use by others.

For companies with extensive trademark portfolios, it is becoming almost impossible to reserve all their trademarks and misspellings of their trademarks in all of the domains and social networks. They could easily employ someone full time just to apply for these names.

Nevertheless, in the end, without trademark registration of the businessesâ trademark, there is little incentive for competitors not to improperly use a businesses name in social media or otherwise.

This entire article (parts 1,2 and 3) has been published by Thomson Reuters in their global IP solutions online magazine. and can be found here.

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