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Protecting your brand from inactive accounts and eroding trademark rights.

Byline: Marcus R. Chatterton

As we discussed in an earlier article about taking down imposters on social media, your company's social media presence is like a garden that must be tended--lest it become overrun with weeds and stop bearing fruit. But, beyond the real threat of imposters and would-be comedians, you must also have a keen eye for the way your intellectual property and brands are discussed on social media.

Eroding trademark rights

Trademark law has long recognized that otherwise-protectable trademarks may lose their protection if the mark becomes a generic term that describes an entire class of goods or services instead of the particular product or service that it was intended to identify. This can happen when a trade name is appropriated by society to refer to all goods in a category--for example, a moving stairway is commonly called "escalator," which was once a trade name. Many well-known terms were once protected trademarks but became generic through the actions of third parties and the inattention of the brand owners: Aspirin, Cellophane, Dry Ice, Laundromat and Videotape, to name a few. Alternatively, a proper trade name can fall into use as a verb--for example, you may use the Google search engine "to google" something. In this case, the verb "to google" may eventually come to refer to the act of conducting an internet search, regardless of which search engine is used to perform the search.

The use of marks in language on social media may be used as evidence that a trademark has become generic. To protect your company's marks, consider the following practices on social media:

Always:

* Use the generic description of your goods or service together with your mark in your social media content--for example, "Lego[R]; blocks" instead of "legos."

* Monitor the way your licensees and vendors use your marks and require them to follow your best practices.

* Use a social media monitoring tool to understand how your marks are being discussed across social media platforms (this helps with so much more than just trademarks).

* Consider adjusting your social media messaging to counter generic usage, like the famous Xerox[R]; advertisement: "Not even Xerox[R]; can make a Xerox."

Never:

* Never use your mark as a verb or as a plural noun in your social media content--Google[R]; should not encourage people "to google" something and, once again, Lego[R]; blocks are not "legos."

* Never ratify a third-party's generic use of your mark; think before you retweet on Twitter[R];.

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The problem of inactive accounts

Sometimes, your company's mark may be in use by a third party on social media in a way that is not directly infringing or subject to takedown under the platform's trademark policy. For example, while the trademarked McDonalds' jingle "I'm lovin' it[R];" is intentionally used by McDonalds in its Twitter hashtags (#imlovinit), the user name @imlovinit is held by an individual that apparently hasn't used his Twitter account since 2007. The names @im_lovin_it, @im_lovinit and @imlovin_it are also currently in use, and two of these three appear to be inactive. These other accounts may hinder McDonalds' messaging. Could McDonalds obtain these Twitter accounts for its own use or prevent others from using them?

Alternatively, your company may want to rebrand or launch a new line but discover (before it is too late) that the new brand is already locked up in inactive or capricious social media accounts. You don't want to end up like Netflix, which announced it was spinning off the DVD delivery portion of its business under a new brand dubbed "Qwikster," without realizing that the Twitter handle @Qwikster was already in use by a man with an avatar of Elmo smoking marijuana and a penchant for late-night munchies. Netflix was lampooned by the tech media and immediately abandoned the Qwikster launch.

When inactive accounts pose a threat to your brand, educate yourself on the platform's inactive account policies. For example:

* In general, Twitter does not close and reassign inactive accounts on request.

* Facebook periodically scrubs inactive accounts (and removes the "likes" generated by those accounts when they were active).

* Twitter is quick to point out that a mere lack of posts does not render an account truly inactive--the account holder may be using the account in non-public ways. More commonly, the truly inactive accounts are periodically deactivated in groups and some of the account names are released back into the pool of available account names.

* In some situations, a report under the Twitter trademark policy coupled with a suggestion that the account is inactive and a persistent request for reassignment of the account ownership may enable the trademark owner to obtain the account.

* You may be able to contact the account holder through private messages and negotiate a transfer of the account--although, some platforms forbid selling the rights to an account.

If all else fails, consider a different branding strategy or account name that identifies your brand in a different way.
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Publication:Inside Counsel Breaking News
Date:May 20, 2015
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