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This is your brand. This is your brand on social media. Any questions?

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Brand building used to be such a simple thing: people liked your products, and they told their friends, and soon you had a reputation.  After a while, people associated your brand (in the early days, literally your physical brand) with quality, and thus equity was developed in your trademark.  And everyone lived happily ever after.

The early days of advertising merely represented more of the same, but on a larger scale — perhaps with some questionable performance claims thrown in for good measure.  During the Mad Men era (the “Golden Age” of advertising) folks began to dig deeply into the associations woven into the brand experience, and teased out clever ways to show that folks buying a cigarette weren’t actually buying a cigarette, but instead were purchasing a whole basket of non-literal associations: Manliness. Femininity.  Rugged individualism.  Love of menthol.

Today, however, things have come full circle, and are now once again about being a fan.  As the Financial Times reported earlier this year:

More than 10m people each day become a “fan” of a brand on Facebook. The world’s largest social network – with well in excess of 400m members globally – plays host to more than 1.4m branded fan pages on Facebook. BrandZ Top 100 brands such as Coca-Cola and Starbucks, along with other smaller brands outside the Top 100 such as Adidas (brand value or BV of $3.3bn in the latest MBO list), have each “befriended” millions of people.

More than 1 billion “likes” are generated each day on Facebook, representing the largest single source of immediate consumer preference information available on earth.  When your brand does something different in the marketplace, the reaction is immediate — and can be either startling positive or savagely ugly within minutes.

From a trademark perspective, this leaves traditional legal analysis somewhere in the dust.  Trademarks are all about control, all about locking down your brand and policing third party uses.  The whole point of a trademark is to designate a single source.  Yet social media insists that, to the contrary, brand building is a partnership with your customers, and that others can — indeed, must — use your brand in order to build a functioning community.

Because of that dichotomy between what the law expects of you and the immediate needs of commerce, marketers need a new framework in order to consider how they use and protect their brands.  My theory is that trademark owners need to step away from mechanistic approaches to trademark enforcement, and instead consider their brands through the lens of what I call “ownable distinction.” 

Trademarks, unlike copyrights and patents, are not property: “a trademark is an identifier, not a freestanding piece of intellectual property” says Judge Posner, our most influential judge (in a case, amusingly, argued by the infamous Marc Dreier).  This means that a trademark exists only to the extent that it continues to function as a source identification.  It is, in effect, a form of consumer protection more than a piece of property that can be sold in gross. 

Thus, it is important to consider how your mark is really being used in the context of social networking, and whether the use by third parties is actuallyundermining the ownable distinction of your mark, or whether it is really promoting it.  For example, if someone creates a video on YouTube about your brand, praising you and suggesting that others buy your product, is that in any way diminishing your control over the brand?  If folks create “fan” sites on Facebook, are they undermining your trademark rights in any tangible way?

Maybe they are, and maybe they’re not — this is always a fact-intensive analysis, and there are certainly many similar situations where the correct response will vary (and there are a whole host of First Amendment and Lanham Act Fair Use issues at stake here that we will discuss in future posts).  That said, it is always a good idea to stop and think about it before rushing off to draft a demand letter.  Rather than a reflexive assumption that all third party use is negative, trademark owners should consider the totality of the circumstances before assuming the worst. 

There is no question that an aggressive response will still be necessary in many cases: For example, if the site is constructed in a manner as to create confusion as to who is actually running the fan page, that’s a no-brainer.  The whole point of trademark law is to prevent confusion, and anything that promotes confusion should still be verboten.  If the site is somehow changingthe nature of your mark’s distinctiveness, that may also constitute grounds for an aggressive response.  If someone adopts your most famous trademark as a Twitter handle, your discomfort is warranted.  However, there are also cases where a scorched earth approach may harm your brand equity, rather than protect it, or where third party use supports your ownable distinction rather than undermines it. 

Thinking through how your enforcement approach applies to social media sites may not result in a dramatic change, but it might, and these days no one can afford to miss out on an opportunity to strengthen their brand.