Nowadays, everyone uses social media to promote services or sell products. The use of social media allows trademark owners (small businesses, artists, influencers) to reach a great number of potential clients. However, the use of trademarks in social media also creates a great deal of risks regarding unauthorized use by third-parties, trademark dilution, and alike controversies.
The use of trademarks in social media is not regulated by special rules different from those applicable to the use of trademarks in non-digital platforms. However, social media platforms are considered now massive channels for advertising and promotion of products and services which raises unique legal issues.
In terms of the laws applicable to the use of trademarks in social media, the relevant statute is the Lanham Act, and the statutes applicable to advertising. It is also worth considering the terms and conditions of the social platforms and the guidelines provided by enforcement institutions like the Federal Trade Commission.
In terms of trademark enforcement, the use of #tags or #hashtags as an advertising slogan has increased considerably in recent years. As a result of this, the unauthorized use of a #tag identical to a registered trademark without authorization may result in trademark infringement actions. Especially considering that in the context of social media publications, #tags are used to disseminate corporate profiles and advertising material.
There is no doubt that social media sites, like Facebook, Instagram or TikTok may play a big role in a business marketing and sales plan. However, to enjoy the benefits of widespread dissemination of content that these platforms facilitate, business owners should take proper measures to protect their trademark. Therefore, as part of their social media strategy trademark owners would benefit from taking some of the following steps.
1. Register your trademark
It is true that the United States laws recognize trademark rights on the basis of use. However, it is not enough to use a trademark to be legally protected. Keep in mind that there are many countries where trademark registration is required. If you want to do business or sell products in countries others than the US, trademark registration is a must.
Additionally, receiving a federal registration for your trademark ensures that you have the sole rights to use it within your industry. Exclusive rights over a trademark make it easier to prove ownership, strength, and priority.
If you decide to proceed with the registration of the trademark, do your research first, a “clearance” search. This search is done to ensure the trademark you chose is eligible to receive a federal trademark registration.
If you chose a word trademark you may consider doing a research on your own through the TESS system administered by the United States Trademark and Patent Office. However, if your trademark is composed of words and images, a logo, for instance, it may be better to hire a professional to conduct the clearance search.
If you chose a trademark with multiple elements, as opposed to a work mark, make sure to hire a trademark attorney to perform a comprehensive trademark search and deliver an opinion letter. This search goes well beyond any search you can perform via Google or the United States Patent and Trademark Office (USPTO) website and allows you to move forward with your business and branding with more confidence.
2. Monitor the use of your trademark in social media
Once you file for the registration of your trademark, are in a better position to use and monitor the use of your trademark on social media. The use of your trademark may come from your own posts, or from publications by employees or clients. Keep in mind that not all use constitutes trademark infringement. Business owners should pay special attention to uses that may result in consumer confusion, dilution or disinformation regarding the reputation of your brand.
Consumer confusion. You don’t need to prove it be the victim of consumer confusion to take legal action against the unauthorized use of your trademark. Under US laws likelihood of confusion is enough. Basically, if a third party is using your trademark without authorization, and consumers may regard that party as an authorized provider of your services, you have a basis to take legal action.
Dilution. Trademark dilution refers to the unauthorized use of a trademark that is likely to weaken its distinctive quality, even if said use takes place in a different industry. Dilution is sometimes divided into multiple types, the most common being blurring.
Trademark reputation. The reputation of your trademark is built on a daily basis. Therefore, monitoring your trademark in social media is critical. Keep in mind that any negative press or reviews regarding your brand can reflect poorly on your brand, harming your sales in the process.
3. Educate the public
To protect your trademark in social media, it is also critical that your customers know your trademark and understand its meaning and fundamental components. Your followers in social media are potential consumers and business partners. Accordingly, use every post as an opportunity to show your trademark with qualify and definition.
As part of the design of your posts, be consistent in the use of the trademark, any modifications may difficult the protection of the trademark. Color changes are irrelevant if you did not apply for the registration of color. However, other changes like the style of the words accompanying the trademark or the position of the logo, could confuse the public.
Finally, keep in mind that according to US laws, every different version of your trademark could be regarded as a different trademark.
4. Educate employees and other team members
Your employees and other team members should also know and understand the components of a trademark, the classes of goods or services that the trademark represents, and legal issues surrounding the unauthorized use of third-party trademarks. Your team should also be content in the use of the trademark so that it keeps its value.
In conclusion, the use of trademarks in social media platforms requires planning and strategy. Whether you plan on slowly setting the presence of your business in social media or you’re going to jump right in, make sure you have your trademark affairs in order. To build a proper presence in social media while protecting your rights, get professional help to conduct a clearance search and file an application. Then, register your business on the major social platforms and build a strong online presence through consistency and monitoring. Finally, coordinate with your team to strengthen the recognition of your brand in social media.
Giselle Ayala, Esq.
Founder of G.A.M. LAW OFFICE P.C.
Giselle has served as counsel and representative on issues related to the review and drafting of commercial contracts, creative developments, transfer of intangible rights, and business formation in the United States. On March 27th, 2021, during the celebration of Latin Women, titled “Powerful Women”, Giselle was recognized by the New York State Assembly with a Certificate of Merit for Outstanding Achievement Entrepreneur.
Dedicated to her clients and her law practice, Giselle is currently communicating with her audience via social media, Facebook, Youtube, Quora, and more. Her service-oriented approach has lead her to where she is now. Giselle is a current member of the New York State Bar (NYSBA), the American Immigration Lawyers Association (AILA), the New York Intellectual Property Law Association, and the American Intellectual Property Law Association.
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New York Trademark Attorney – NYC
Dedicated to protecting your intellectual property & trademarks in NYC and beyond.
Trademarks are the essence of a brand, making it pertinent to a business’s success to successfully protect its trademarks in New York, NYC, and beyond. Our New York trademark attorneys in NYC help businesses properly protect product names, logos, and slogans. When trademarks are properly protected, they generate significant and long-term value. Trademarks are often a company’s most valuable asset, so thoroughly intertwined with the business that it is difficult to extricate the two.
Accordingly, selecting a trademark is a critically important decision when developing a brand. At G.A.M. Law Office, our New York trademark lawyers help clients select, properly use and register their trademarks. Our trademark services include trademark filing, New York trademark registration, brand strategies, counseling, clearance searches and risk analysis, registration, TTAB proceedings, enforcement, and licensing in NYC and beyond.
New York Trademarks Attorneys In NYC
When it comes to the registration of a trademark, being careful is the best strategy. No one wants to pay a nonrefundable fee to the USPTO to realize later that the trademark is not registrable. Additionally, suppose the registration has errors, clerical or not, no business owner wants to go through correcting them before getting a real chance of registering the trademark.
For many individuals, businesses, and organizations, trademarks are one of their most important assets. Whether seeking to identify, register or protect a trademark such as a company or organization’s name, a logo, or a slogan, our law firm works with clients to assure protection and the development of a strategy that can last.
What is a Trademark?
A trademark is a sign or symbol capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights. Trademarks can be nominative (words), mix (words and logos), figurative (logos), sound trademarks, audiovisual (video), and tridimensional (also known as trade dress).
What Is the Best Trademark?
A trademark is the “best” when it reflects the message and purpose of the owner, whether it is an individual, a business, or an organization. Additionally, when it comes to word trademarks, the best are made or invented words because they are the most unique.
The higher level of distinctiveness of a trademark, the better. There are four levels of distinctiveness when it comes to word trademarks: generic (nor protectable), descriptive (might be protectable to some level), suggestive, fanciful, and arbitrary. The best strategy to register an effective trademark is to conduct a clearance search and understand the process of selecting the right one.
The Trademark Registration Process
We make the registration and protection of your trademark easy.
A federal trademark registration is obtained by filing an application, along with the requisite fee, with the U.S. Patent and Trademark Office (USPTO). An application may be filed on either Principal Register or Supplemental Register and is examined/prosecuted in the USPTO by one of many staff trademark attorneys.
If there are any grounds for refusing an application, the examiner will raise them in an Office Action. The examiner’s objections must be fully resolved or withdrawn for the application to proceed to publication. Once a Principal Register application is published, third parties may object to the application by filing a notice of opposition with the Trademark Trial and Appeal Board (TTAB). The application will proceed to registration if no opposition is filed or if an opposition is withdrawn or successfully defended. Supplemental Register applications proceed directly to registration once published. Our NYC trademark attorneys can help with the trademark registration process.
The analysis of the mark the client wants
The attorney and the client’s first step is to have an open conversation about the trademark that the client wants. For purposes of this meeting, it can be essential that a member of the client’s marketing team is present. The attorney wants to understand what the client wants in terms of the trademark in the short and long term, what the mark looks like, and how the client and the team use the trademark in commerce. This meeting is one the most important because it allows the attorney to determine: whether the client can register the mark, whether the client needs to modify the mark, if the client needs to make adjustments in terms of the use of the trademark in commerce, or if the client needs to come up with a new trademark.
The number of marks to be registered
After meeting with the client, the attorney understands the client’s trademark and can explain whether the client’s goals require one or more applications. The client may want to protect several elements of the trademark. For this purpose, the client can register the trademark as a word trademark without protecting any specific visual elements. Suppose the client also wants to protect specific visual or artistic components of the trademark. In that case, it is necessary to file two different registrations, one for the words of the trademark alone and one for the trademark with a visual design.
Additionally, some clients sell products using specific packaging or presentation. These features of a product can be classified as trade dress if they comply with specific requirements. Trade dress is another form of a trademark, and it can be registered too. Trade dress is, generally speaking, the total image and overall appearance of a product or service. It may include features such as size, shape, color or color combinations, texture, graphics, sounds, scents, and flavors, motion and moving images, particular business techniques, and the look and feel of a website.
The classes of goods or services for mark
Another critical aspect of the attorney’s services is understanding the client’s business and what the trademark is doing for it. The client may have a business that provides several goods and services; this does not necessarily mean that the mark can be registered to identify all of them. To register a trademark, the USPTO requires that the applicant make a specific description of the type of goods or services distinguished by the trademark and submit proof of such use. That evidence is called a “specimen” of use in commerce.
Considering all this, the attorney must review how the client is selling or promoting its goods or services and what marketing or advertising materials are using. Some clients are unique entrepreneurs that attract customers by talking indirectly about what they sell. An example of this is Starbucks, which is known to promote itself by “selling you an experience,” not a coffee. In terms of marketing, this strategy probably works. However, in terms of trademark law, an applicant must directly show to the USPTO examiner the goods or services promoted by the trademark. In terms of the USPTO, the applicant must show a “direct association between the mark and the goods or services.“.
In sum, with the attorney’s help, the client can assign a proper classification of goods or services to the trademark and submit the proper evidence to show the use of the trademark in commerce.
The registrability of the trademark and the assessment of risk
Finally, the attorney’s most crucial task is to build a Trademark Clearance Report covering the analysis explained above and assess possible problems with the registrations if the client and the attorney don’t make corrections. The report explains to the client the following:
– The type of trademark that will be registered.- Whether there are prior similar trademark registrations or applications.- Whether there are any conflicts.- Whether there are any factors that the examining attorney can use to deny registration or request additional evidence.
It is also worth noting that in contrast with the research that a non-attorney can perform, a U.S. trademark attorney will conduct comprehensive research in order to determine the existence of grounds for denial, including the existence of common law trademarks, the existence of business names similar to the trademark, the existence of marks registered in states where the client wants to do business, the existence of other legal issues like a constitutional bar to registration or right of publicity issues.
The report built by the attorney is crucial because it is the basis of the client’s final decision to proceed with the trademark as it is or to change the trademark. Additionally, if, despite diligent work performed by the attorney, the USPTO Examining Attorney objects to the registration, the report serves as a basis and a guide to defending the client’s trademark application.