Activity in social media not only provides information on a product or service identified with a trademark, but also contributes to the general image and reputation of a person or company.\u00a0 Trademark counsel should be involved in the drafting of a company\u2019s social media policy in order to regulate the use of a company\u2019s name and trademarks on any platform, including employee\u00b4s personal accounts.\u00a0 The policy should address the type of content that is permitted, the personnel allowed to post content, and the appropriate time to post.\u00a0<\/sup><\/p>\n The policy should offer a clearance process<\/strong> prior to the use of an expression, design or image. This will prevent any third-party infringement claims.<\/p>\n Counsel should implement the use of online agreements<\/strong> for social media platforms in order to regulate the monitoring of third parties\u2019 uses and activities.<\/p>\n The policy should also cover the enforcement of trademarks and copyrights<\/strong>, taking into account the type of infringer, the government regulations that may apply and the potential negative effects on the company.\u00a0 Personnel such as members of the marketing group, the company\u2019s press or public relations department, and of course, someone from the legal department should receive reports on damaging or infringing posts.\u00a0 There should be constant monitoring of social media platforms and websites in order to find infringements or damaging uses. \u00a0Meaningless remarks or uses of a trademark should not be the main concern.\u00a0 Monitoring should focus on finding misuse of trademarks that could mislead consumers to believe that a use or remark was made with the trademark owner\u2019s authorization.<\/p>\n Loopholes in a policy should be addressed by an expert trademark counsel with proper research and good judgment.\u00a0 As mentioned before, sometimes there are no black and white answers and a well-thought process may require the involvement of personnel from other areas such as marketing, communications, PR and those working on the development of a product or service under a certain trademark.\u00a0 Challenges continue as additional social media networks develop and the number of websites that offer products and services grow.<\/p>\n The success of trademarks may be measured by their fame and recognition by consumers.\u00a0 Social media has played a key role in the development of these aspects. \u00a0Every day, business folks use different types of social media in order to advertise their marks. \u00a0Some use their own profiles or websites; some hire influencers to pitch about their trademarks; others use cookies<\/em> to flood the Internet with unsolicited advertising, and finally, others use hashtags, a very popular tool to attract attention to their trademarks in social media.<\/p>\n Hashtags serve a very simple yet clever function: drawing attention. \u00a0For this reason, the use of hashtags has become increasingly common for companies and individuals as a marketing strategy, however, their use can turn into a headache for trademark owners since it is very difficult to prevent third parties from posting discrediting or harmful content through hashtags that link a trademark and could be damaging to a company\u2019s reputation. \u00a0In some cases, unscrupulous fellows also use hashtags in social media in order to free-ride on someone else\u2019s trademark reputation and use it for massive unauthorized or counterfeit sales. \u00a0Some of these cases have resulted in rulings from the courts in which the legitimate owner\u2019s complaints have been upheld and free-riders have been sanctioned due to trademark infringement.<\/p>\n In Eksouzian v. Albanese<\/em>, Case No. 2:13-cv-00728-PSG-MAN (C.D. Cal.)parties who manufactured and sold the same type of product (compact vaporizer pens) agreed to settle trademark infringement claims. The parties agreed that, whilst the plaintiffs had exclusive use of the word \u2018CLOUD\u2019 as a unitary mark, it could not use the word \u2018CLOUD\u2019 in close association with the words \u2018PEN\u2019, \u2018PENS\u2019, \u2018PAD\u2019, etc. (a conduct allowed to the defendant).\u00a0 The defendants used the following image to promote their product:<\/p>\n The plaintiff used the hashtag \u2018#cloudpen\u2019 in social media. \u00a0The defendant claimed that this was a violation of the agreement. \u00a0The court concluded that \u201chashtags are merely descriptive devices, not trademarks, unitary or otherwise, in and of themselves\u201d their use \u201cis merely a functional tool to direct the location of the plaintiffs\u2019 promotion so that it is viewed by a group of consumers, not an actual trademark.\u201d<\/p>\n While the use of the # symbol seems not to be a clear breach of trademark rights their use is not completely clear for free use. \u00a0During the Olympic games of July 2016, held in Rio de Janeiro, a controversy arose involving the use of \u2018#Rio2016\u2019.\u00a0 The USOC (US Olympic Committee) sent cease and desist as well as warning letters to non-Olympic sponsor companies that used USOC\u2019s trademarks in hashtags and social media, such as #Rio2016 and #TeamUSA. \u00a0Oiselle, a women\u2019s apparel company, posted \u201cShe\u2019s going to Rio!\u201d and \u201c#RoadtoRio\u201d in an Instagram post when one of their sponsored athletes qualified for an event.\u00a0 Soon after, the USOC contacted Oiselle requesting cease of use. Eric Goldman, a Professor of Law at Santa Clara University, interviewed by the BBC, considered the approach as \u201coverly aggressive and ridiculous\u201d: “I think that trying to tell companies that they can’t use the hashtag #Rio2016 or #TeamUSA in their tweets, most of the time they’re going far afield of what the law permits and when companies use the ambiguities of trademark law to try and squelch socially beneficial conversation, I call that bullying.”<\/em><\/p>\n The German Olympics Sports Confederation and Team Gb (the mark name used since 1999 by the British Olympic Association (BOA) for their Great Britain and Northern Ireland Olympic team<\/a>), as did the IOC on the topic, published guidelines that emphasized the strict restrictions on the use of IOC registered marks by non-sponsors.\u00a0 Such guidelines covered the use of hashtags such as #Rio2016.\u00a0 They explained that such use verged on trademark infringement territory and as such, non-Olympic partners and non-sponsors should refrain from their use. \u00a0IP rights policies such as Twitter\u2019s, with strict management of copyright infringement, received requests to remove trademarks in hashtags.\u00a0 No legal action was taken although it is clear that the use of wording related to the Olympics by non-sponsors should not be pursued.\u00a0 The argument that use of a mark in a hashtag as merely descriptive will likely be unsuccessful in such cases.<\/p>\n There are some cases in the U.S. in which third parties have attempted to use hashtags as evidence of the distinctiveness of a mark. \u00a0The USPTO however, has declared that hashtags are not considered a significant source of distinctiveness \u201cbecause a hashtag will usually be perceived as part of an online social media search term, a hashtag generally serves no source-indicating function and adding such symbol or term to an otherwise unregistrable mark typically does not render the mark registrable.\u201d In light of the foregoing despite the popularity and effectiveness that a hashtag may have on social media, this will not necessarily have the same positive outcome in the registration process of a trademark.<\/p>\n A mark comprising or including the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant\u2019s goods or services. \u00a0The symbol and the wording HASHTAG does not provide any source-indicating function because they merely facilitate categorization and searching within online social media [\u2026]\u201d<\/p>\n An example of the use of social media as a means to advertise a mark, without incurring in trademark infringement, is the advertisement of Oreo cookies in a twitter post during a power outage at the Super Bowl a couple years ago. \u00a0They tweeted a picture of an Oreo cookie with the caption: \u201cYou Can Still Dunk In The Dark.\u201d\u00a0 While the ad could connect the sentence with the Super Bowl, there was no use of hashtags or names to the competition or the sports teams \/companies.<\/p>\n While companies and individuals should be careful and refrain from using third party trademarks in their ads and promotional materials as well as social media, it is important to recognize that some uses by third parties in hashtags and articles are simply informative and considered newsworthy material.\u00a0 In light of this, a careful assessment of the use should be conducted prior to the release of the remark on social media in order to avoid uncomfortable situations that involve cease and desist requests and claims from trademark owners.<\/p>\n By Bibiana Agudelo<\/a> and Daniel Trujillo<\/a><\/p>\n","protected":false},"excerpt":{"rendered":" Social media has become an important tool to connect with one another and as a means to promote one\u2019s business ideas. \u00a0Visibility of products or services is just a few clicks away on a computer, tablet or smartphone.\u00a0 Social media networks pose a challenge for trademark law and specialists suggest various strategies for trademark protection. […]<\/p>\n","protected":false},"author":2,"featured_media":10638,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_et_pb_use_builder":"","_et_pb_old_content":"","_et_gb_content_width":"","_monsterinsights_skip_tracking":false,"_monsterinsights_sitenote_active":false,"_monsterinsights_sitenote_note":"","_monsterinsights_sitenote_category":0,"footnotes":""},"categories":[50,126],"tags":[],"class_list":["post-10630","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-trademarks-2","category-intellectual-property"],"yoast_head":"\nActions<\/strong><\/h2>\n
The usual approach: cease and desist communications<\/strong><\/h3>\n
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Hashtags\u2019 simplicity<\/strong><\/h3>\n
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