IP Cases & Commentary – Details
23 April 2013
Social Media Usernames and Brand Protection Strategies
More and more frequently, people are utilising social media not just as a way of connecting with others and socialising online but also to interact with brands. Many well-known brands are now found online, particularly by younger consumers, simply by searching on popular social media websites such as Facebook or Twitter.
It is now a well-established practice for many brand owners to secure registered trade mark protection, at least in their key territories. Indeed, it has also become standard practice to register various domain names incorporating those trade marks and/or close variations. However, it is less common for brand owners to register trade marks or company names as so called usernames on social media websites, despite the increasing threat that is posed by failing to do so. Perhaps in time, this will also become standard practice; however, in the meantime, there is a very real prospect of rights being effectively hijacked and, if nothing can be done to stop this, litigation ensuing.
Brand protection strategies
In an ideal world, trade mark owners would acquire their company name and all trade marks as usernames on all social media websites relevant to their brands. This is likely, with sizeable trade mark portfolios, to be an expensive and onerous task. However, reserving names and marks as usernames is a undoubtedly a good strategy to adopt, in the same way that defensive domain name registrations are used as a way of combating cybersquatting, even where there is no immediate intention to put the usernames to use. Therefore, if due to the size of the portfolio and/or the number of social networks of interest, some prioritisation is required then first and foremost, brand owners would be well advised, as a minimum, to seek to register usernames for their core brands and to target the more well-known social media websites and those on which their consumers tend to network.
When to register social media usernames
The registration of usernames should take place as early as possible and preferably even before the brand is known to the public. It is never too early to register and the failing to do so could lead to the brand owner discovering that the name has already been registered (in the worst case scenario by a competitor). It is worth considering however that if no use is made of usernames, it is possible that some websites could suspend these. Therefore, it is recommended that at least a page is set up for each username and that this is updated whenever possible. Further, if a brand owner has many different brands and seeks the registration of those brands as social media usernames, it would be good practice to set up a record of these and be aware of new social media websites as they grow in popularity.
Be proactive, not reactive
Some proactive brand owners use social media as an essential and in many cases integral part of advertising campaigns. Others are more reactive and, as a consequence, stand to have their usernames hijacked in the same way that domain names have been for years. Misuse of usernames could have very significant consequences and the dilution of a brand is a very real threat. There are of course ways and means to enforce rights, particularly if a brand has sensibly registered trade marks; however, unless misuse is monitored and policed effectively, the effects can be damaging.
Enforcement strategies –three approaches
By far the most cost effective and efficient way of resolving the vast majority of issues where confusing use is being made of usernames is by sending the user a polite tailored notification of the brand owners' rights and requesting that the use ceases.
If the user refuses to cooperate and a brand owner still considers that a third party is using a brand name in a way which infringes its rights, it is usually only likely to be possible to persuade the social media website to take down the content if the name is identical to the brand and being used for goods/services which makes the use confusing. The most popular social media websites have their own policies and the larger and better known websites are those with more advanced policies and experience of dealing with take-down requests. However, smaller, lesser known websites either do not have such policies or have policies and procedures that are, in general, far from ideal.
If neither of the above two approaches succeed and a brand owner remains concerned about misuse of a name, it is makes life much easier to take matters further with trade mark registrations in place. Therefore, going forward trade mark applications are highly recommended at an early stage and perhaps at the same time as registering usernames if the owner does not already have registered rights. It is worth bearing in mind that trade mark rights are territorial and therefore if co-existing rights exist in two identical or closely similar names, the registration of usernames on social media websites that cross borders would be on a first come first served basis. It is therefore important where brand owners are aware of co-existing brands in different territories to claim the username(s) first.
It is important to consider that a litigious approach to disputes that can be resolved amicably is unlikely to be attractive in this internet age. One negative 'tweet' could be catastrophic if it is re-tweeted and spreads. Negative publicity can spread very quickly indeed, and threatening letters can easily be published for all to see. Therefore, litigation is often seen as a last resort by image conscious brands.
Also, in some cases, misuse of a brand can be innocent, for example by fans or followers of a particular brand. This should be borne in mind when seeking to resolve the matter; however, issues should not simply be ignored since problem scan grow rapidly. Misleading use can quickly damage to a well-earned reputation and ignoring issues can be perceived negatively by true fans or consumers of the brand owner's goods.
Social media has taken the world by storm and the creation of the ability to register social media usernames is just one way of making it easier for consumers to access their favourite brands online and connect with them in a way that was not previously possible. However, where there are opportunities for legitimate brand owners, there are inevitably also opportunities for brands to be effectively hijacked and exploited to the detriment of the reputation of the brand. Brand owners should be vigilant and are advised to recognise the importance of the registration of trade marks and also social media usernames as part of their online strategy.