YourABA June 2012 Masthead

Managing your brand in social media:  Be proactive, act fast

There are 800 million Facebook users; 100 million on LinkedIn. And there are billions of users social-network users worldwide. Social media is the future of e-commerce, laid out panelist Rob Holmes of, during a recent Section of Intellectual Property Law program.

But social media and law generally move at very different paces. Social media involves rapid, instantaneous interactions and a general lack of privacy. Law, on the other hand, tends to develop at a slow and steady pace, with a high level of confidentiality. In describing the differences, moderator Matthew Asbell of Ladas & Parry LLP hinted at the challenges at the crossroads of the two in "Licensing, Control and Monitoring of Trademark Use on Social Media Websites," a program held as part of the section's 27th Annual Intellectual Property Law Conference in Arlington, Va.

Keep watch over your brand

Darin Klemchuk and Roxana Sullivan, authors of the Litigation News article "Brand Enforcement on Social Networking Sites," provide a checklist for companies embarking on Web 2.0 endeavors.

Register your brand. The simplest of actions can prevent a loss of time and expense in trying to reclaim your mark once someone else has registered it.

Have a monitoring system in place. Websites such as (alerts when someone tweets about your company) and (reports on who is bidding on keywords that relate to your trademarks) are effective tools that can be used internally with minimal expense.

Take an active role in social networking sites. It can be helpful to create your own positive press and benefit from the viral effects of promoting your brand on social networking sites.

Determine your pain tolerance. What type of infringement are you willing to tolerate and to what extent are you willing to tolerate it? When will you be motivated to act? Will you send out stern cease-and-desist letters or take a gentler approach?

Implement an employee policy that addresses social networking content.

Litigation News is a publication of the Section of Litigation.

Asbell said that through social networks, trademarks are now regularly incorporated in usernames, Web addresses and user profiles as well as in conversations and other relatively dynamic online content. Trademark owners are usually the ones marketing their brands in these ways, but in many instances, they aren't the ones in control.   

Kelly Slavitt of Reckitt Benckiser Inc. explained that the ease of creating and sharing content immediately to vast audiences on network sites has resulted in many trademark imposters online.

To help combat fakes, Holmes suggested that businesses take a proactive approach to trademark protection on social media by reserving their brand name on everything on as many networks as possible. He recommended using KnowEm, an online tool to check for the use of a brand name on about 600 popular and emerging social networks.

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Panelist Fawn Horvath of Macy's Inc. suggested an additional tool,, a username registration service.

Horvath emphasized the importance of addressing trademark breaches, warning that failure to do so may impact consumer impressions of trusted brands.

However, businesses enforcing their rights must wisely choose their weapon in fighting infringers and do so with an appropriate tone, the panel cautioned, warning of social media backlash.

Sometimes fans of a trademarked product are the infringers, expressing their feelings through parody and other methods of support. Panelists said that businesses may want to avoid quelling the enthusiasm of such fans and instead take a gentle approach in asking the individual to take down the content. In other instances, the use may be malicious and trademark owners will want to come across with a tone that means business.

There are times when a company may not want to react at all to infringing content posted online. If it's an infringement that will be gone or off the "radar screen" in 12 hours, it may make more of a media frenzy if the issue is raised, Slavitt noted.

A good proactive approach in dealing with social media should include a monitoring-and-enforcement partner who understands the company's priorities and can respond quickly, Horvath said. Action should be guided by a pre-established internal process that includes an established list of contacts to move forward with an enforcement intervention.

Businesses should also develop social media rules for their products as well as social media policies on employees' brand use.

Additional panelists for the program included Robert Doerfler of SVP Worldwide and Catherine Bridge of The Walt Disney Co.

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