Confronting a Trademark Bully on a Digital Playground
by Tom Kulik
The explosion in online social networking has changed the landscape of trademark policing online. Certain trademark owners appear inclined to stretch the boundaries of their “playground” under U.S. trademark law as trademark use online has skyrocketed beyond mere use in domain names and email addresses to include social media site “handles” and other online aliases.
Examples range from social media gaming company Zynga (creators of the popular “Farmville” game) to Facebook’s well-publicized bouts with Teachbook and Lamebook. Both of these companies claim that the underlying “roots” of their trademarks (i.e. “-ville” and “-book”) have become highly distinct in the their digital “space,” and they are not afraid to aggressively defend and protect them—leading some to refer to their tactics as “trademark bullying.” For the uninitiated, these developments have created an interesting game of dodge ball that must be played with caution.
Although trademark owners have a duty to police their trademarks, trademark law relies upon a “likelihood of confusion” as the litmus test for infringement. What Zynga and Facebook have in common is their strong belief in their trademarks’ distinctiveness from the proliferation of their products and/or services. These companies, however, need to be very methodical in their arguments and strategic in their evidence to avoid having “spirited” policing seem like bullying to the consuming public. Sharing a “root” alone, without more, is not enough. So how can a company avoid being picked on by a trademark bully? Here are a few helpful (but by no means exhaustive) tips to handle them on the digital playground:
1. KNOW your playing field. Generally, using confusingly similar trademarks in a social media handle or online alias may not only be infringing, but such infringement may violate the service’s terms and conditions and result in suspension. If your client entertains the use of a descriptor or logo that uses such “roots” of a recognized brand (especially any of the ones mentioned above), investigate potential uses of the mark online. When investing heavily in the anticipated brand, perform a full search through qualified trademark counsel to uncover other uses in your client’s field. Make no mistake—your client will likely get the trademark registrant’s attention upon using the intended mark online or otherwise filing a trademark application for federal registration in the USPTO. So this homework is mandatory.
2. UNDERSTAND the rules. Similar to the foregoing, trademark rights depend upon a number of factors, and a basic understanding of what constitutes a trademark and how such rights accrue under the law is essential to understanding what rights your client may (or may not) have in the anticipated mark. Where a brand presence is sought on a social media site, such service’s terms of use and policies will also come into play and must be reviewed.
3. HOLD your ground. Just like confrontation on the playground, don’t reflexively back down from a company demanding immediate compliance with a cease and desist demand—especially if you did your homework before beginning your use of the mark in your business. Although they may forcefully assert certain facts in their demand they deem dispositive, the reality is that they may not have done their homework under the law. Sometimes such demands have not been properly investigated, or may be in error. Investigate as thoroughly as possible before responding.
4. RALLY your “teammates.” If the trademark has been used in commerce for some time, you may be able to use publicity concerning the dispute to your advantage. Part of the reason Lamebook.com was able to induce a settlement from Facebook was not only its legal position (as most people understood the purpose of Lamebook and were not at all confused by the lighthearted fun and arguable satire/parody), but the negative publicity generated against Facebook. Rather than take additional hits to the brand, the complaining company may be willing to deal (and in some cases, consent to your client’s continued use).
5. STRIKE BACK where necessary. Similar to playground shenanigans, don’t be afraid to take the offensive when the facts require it—this is where qualified trademark counsel is invaluable.
There’s nothing like punching a bully in the nose when they deserve it. In doing so, however, make sure you are prepared for a potential fight. Your client’s brand may be counting on it.
Tom Kulik is a partner at Scheef & Stone, L.L.P. and current Vice-Chair of the DBA Computer Law Section. He can be reached at tom.kulik@solidcounsel.com.
