Social Media and Trademarks: Understanding Your Rights in a Digital Age

The popularity of various social media applications, such as Facebook and Twitter, has grown at a rate that far exceeds the ability of courts and the legislature to keep up with regulations and their interpretation.  A user on any one of these applications is able to post a comment, a picture, a link or logo within seconds of its creation, becoming a potential advertiser for their own company or for another business entity.  At the same time, such a posting may open the user up to liability for trademark infringement, misuse or other causes of action.

Of particular importance at this intersection of social advertising and trademark law is the rights of individuals or small businesses with common law trademarks.  In the U.S., trademark rights are created by use, not by an official registration.  Any trademarkis a name, slogan, logo or any other indicator that a particular source provides a specific good or service.  A common law trademark is one that is used and continues to be used in commerce without ever filing for official registration.  Determining who has the legal right to use the mark is a question of priority.  Without registration, the trademark owner may be able to enforce the mark against anyone using the same or a confusingly similar mark in connection with the same goods or services in the territory in which the mark is used.

Many small businesses have developed common law trademark rights through names or logos and have not had the mark registered, most often because they do not qualify for federal registration.  With the growth of social media as a marketing tool, these businesses create Facebook pages and Twitter accounts, displaying those names and logos.  Increasingly, these local businesses are being forced to abandon those marks or risk losing their social media accounts because a larger, national business has threatened them with legal action, even if the national business was not using the mark first.

A federal registration will help any business create solid, enforceable trademark rights.  However, a federal registration does not always allow the owner to terminate the earlier use of a common law trademark.  Facebook, Twitter and other social media applications are world-wide and cannot limit access to certain geographic territories because of federal or common law trademark rights.  If you have had your Facebook page or Twitter account removed because of an alleged trademark violation, you may be able to have your page restored.  Although courts are just starting to hear these cases, there are decisions and legal precedents that may support you if you have encountered these circumstances.

The combination of national advertising, social media platforms and traditional trademark principles create technical and very complex legal issues.  Knowing your rights in this area is critical to your established goodwill and your continued business success.

For more information or to speak with us about your legal issue, please contact us in Ann Arbor at 734-665-4441, and in Ypsilanti at 734-483-3626.  To learn more about Pear Sperling Eggan & Daniels, P.C., or any of our attorneys, please visit us at www.psedlaw.com.

Selecting and Registering a Trademark

Any business, whether emerging or established and looking to expand, should consider one or more trademarks to help consumers identify the source of certain goods or services.   Regardless of any formal registration, trademark rights are created through their use in commerce.  Therefore, it is possible for different entities to obtain trademark rights in the same trademark for different goods or services or in different geographic locations.  Although state or federal registration is not required to obtain an interest in a trademark, it does provide some additional benefits.

In selecting a trademark, the strength or distinctiveness of the mark is critical to the mark’s overall level of protection.  Generally, the more distinctive the mark, the easier it is to register and prevent the use of that same or similar mark by another.  The strength of a trademark depends on the level of distinctiveness.  Fanciful marks are often considered the strongest, followed by arbitrary marks, then suggestive marks and finally descriptive marks.  Merely descriptive marks are typically not entitled to registration on their own, but may acquire distinctiveness over time.  Generic terms are not entitled to any trademark protection.

As noted above, a trademark is created through its use in commerce and registration is not necessary to have rights in a trademark.  Using an unregistered trademark gives the user common law trademark rights in the geographical area in which the mark is used, and slightly beyond in some cases.  If the mark is being used in interstate commerce, federal registration may be possible.  If the mark is only used within one state, state registration may be available.

Whether a mark is available for use and whether it can be registered are different inquires that need to be made.  Before an entity chooses a trademark and begins using it in commerce, it is always recommended to obtain a clearance opinion regarding the proposed mark.  A detailed search report will limit legal liability, as well as prevent wasting time, development and money on a mark that may already be in use by another, thus possibly requiring the entity to change its mark after years of consumer association and goodwill.

Trademarks are arguably the most important asset a business can have.  A strong, distinctive trademark is essential when trying to grow a customer base and become recognized as the source of a particular good or service.  As long as they continue to be used in commerce, trademarks can last in perpetuity.  Making an initial investment in selecting and securing your trademark will go a long way in successfully growing and maintaining your business.

For more information or to speak with us about your legal issue, please contact us in Ann Arbor at 734-665-4441, and in Ypsilanti at 734-483-3626.  To learn more about Pear Sperling Eggan & Daniels, P.C., or any of our attorneys, please visit us at www.psedlaw.com.