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Trademarks and Social Media (Pt. 1)

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Each year I attend the enormous International Trademark Association Annual Meeting, this past year held in rainy San Francisco.  INTA (as it is popularly known) has grown from having  a few hundred attendees roasting marshmallows around a fire in the 1970s (then it was known as the USTA), to housing more that 9000 lawyers today in every hotel within a mile of the Moscone Center.  This coming year, it will be in D.C., which will be swarming with even more lawyers than is typical on a beautiful spring day in our capitol city.

As different as they may be (and they come from all over the world, from countries both significant and profoundly obscure) many of these lawyers share an important characteristic: they are disturbed by social media and what it means for branding.  In this, they are no different than many of our clients, most marketers, and just about anyone who bothers to think about these things.

Now this is all something that we have mentioned before, but it is worth discussing again because the problems continue to grow more complex and more distressing, and the opportunities grow more vivid and more intricate.

It used to be that trademark use took place by you, and only you.  If someone else used your trademark it was not only a bad thing, but it could be devastating for your brand and the viability of your trademark.  Heck, even licensing your trademark wasn’t permitted in the early days of modern trademark law.  Today, however, while trademark owners still must guard against their mark becoming generic and unprotectible, marketing consultants will now badger you and claim that you actually wantyour brand to be the subject of third-party use on the web.  According to just about everyone, you should allow your trademark to be used by others, every day, all over these fine intertubes.  And most importantly, the use of trademarks in social media is uncontrolled, often confusing, and subject to laws that were first developed in a time when the founder of IBM still (allegedly) believed that “there is a world market for maybe five computers.”  What is a poor, besieged trademark owner to do?

Thankfully, however, all of the panic over trademark use on the Internet and through social media channels is to a certain extent undeserved.  While trademark law has not exactly caught up to the complexities of a modern networked world, trademark law is in the end about confusion, and confusion is an idea that easily translates across any media platform.

The first thing to understand is that trademarks (unlike copyrights and patents) are not property.  No, really, it’s true.  Instead, they are consumer protection devices, intended to protect the public.  Obviously, as the years have gone by and guild marks have slowly mutated into a crazy quilt of unconventional trademarks, it can often seem like they are no different than any other asset.  But in fact, they are fragile things that can easily become generic if too popular, or abandoned if not used assiduously, or damaged if not used consistently. 

What all of this means is that simply because someone else is using the same word that you have been using to identify yourself does not necessarily mean that they are “infringing” anything.  You can have “Jones” as the trademark for industrial screws, and “Jones” as a trademark for women’s clothing, all at the same time.  That said, some trademarks are so famous that they can seemingly occupy the field — try calling your new car brand “Coca-Cola” and see what happens.

In other words, all of these things are subject to the equities of a given situation, and multi-part tests weighing the strength of the mark, the similarity of the goods, and a whole host of other elements are used to determine whether a likelihood of confusion exists.  And that is the case whether or not you are online, or not.

But while confusion is the same irrespective of whether you are selling hamburgers or bytes, the web has changed one thing fairly dramatically — it has virtually eliminated geographic isolation.  When I first started practicing, the idea that a trademark use could be limited to, say, New Jersey was taken for granted.  Local businesses were genuinely local, and if someone else used the same trademark in Arizona they would likely never run into each other or create any chance of confusion.  Today, a search engine doesn’t care where you are, and it may pull up results right next door or across the globe.  For that reason, while trademark infringement is arguably the same as it has always been, the trademark clearance process has become even more of an art.  How much is enough, and what types of things are neessary in order to feel comfortable with the choice of a trademark?  And on the other side of it, how concerned should you be if another party adopts a trademark similar to yours in another part of the country, or even the world?

So while general panic is not warranted, even as these complexities grow ever more entangled with each passing step into the cloud, it is important to realizse that trademarks are a central part of your identity online — in many cases the only one — and attention must be paid to these issues from the very start.

More to come on how this specifically matters in the world of social media — and whether that is different from online use more generally.