The increased popularity of social media is changing the way we digest and follow brands. Brand owners need to consider how to respond to the changing environment and how to maintain appropriate control over the use of their brand by others. Is social media the next best thing for brand development or could it be a trademark danger zone?
Playing to a bigger crowd
In 2016 social media users reached 2.3 billion. With an audience made up of consumers, competitors and industry influencers, social media is a melting pot of opportunity and risk. Social platforms have quickly become a go-to platform for engaging with customers. If used correctly, companies have the potential to build an online persona that stands out and drives commercial success.
Official Twitter statistics suggest that 66% of US brands now use the social platform for marketing. PlayStation has more than 13 million followers, Starbucks almost 12 million, and Samsung 2.5 million. These brands have earned their online following, typically by sharing valuable content, posting consistently, and engaging with followers to build relationships.
Brand development: a sweet treat
Having a large online following enables brands to generate a public brand persona. Marketing executives try to develop online personalities for brands through the content posted or via interaction with followers. The theory is simple – this approach can humanize a brand and make it appear more relatable for consumers – but brand personas can also be leveraged in less approachable situations.
When big brands enforce their trademark rights against potentially infringing smaller entities, the David-and-Goliath-type battle can help to alienate the consumer market. Brands such as M&Ms are now using online personas – developed on social media – to gently enforce trademark rights.
Since 2012, M&Ms brand has used six “spokescandies” to characterize its sweet treats. The six characters differ in color, flavor, size and personality. The six personas are used across the brand’s marketing campaigns: on TV, online, in M&Ms World stores and across product packaging. M&Ms has even used the characters to send enforcement letters and takedown requests. This approach to trademark enforcement is consistent with the Mars Inc. brand as a whole and reflects an innovative and approachable business.
Fighting infringers on the social front
Brands need to be aware not only that their trademarks can be infringed on social media, but that they could also be infringing someone else. Social media is a platform for discussion and socialisation, but it is also a landscape where businesses market brands to consumers. Social sites such as Twitter and Facebook now contribute to the web of data that should be checked for trademark infringement. For this reason brands need to watch mentions of their name and products online. All domain name searches and investigations should include social media.
The anti-social media
Social media can also prove to be detrimental to brands. Social media enables consumers to share their views publicly about brands, their products and their actions. Negative reviews or comments can spread quickly and at a time where ‘going viral’ is just a click away – brands need to be mindful of the way they are perceived. If brands make a mistake online, screenshots can be widely shared and consumers can be slow to forgive.
Mars’ use of its M&Ms characters in cease and desist letters demonstrates how legal stipulations are crossing into the social arena. In a trademark enforcement case between Red Bull and Old Ox Brewery, social media was cleverly used to express views about the approaching litigation – but not in Red Bull’s favor.
The energy drink company filed a formal opposition to the Old Ox Brewery’s trademark, and its very name – Old Ox Brewery.
After failing to reach a compromise through a more informal process, Old Ox Brewery took to social media to gather support and make their case. This included posting an informal open letter to Red Bull on its website, where the company claimed it was being held “hostage” by the brand’s demands. Old Ox Brewery then shared the blog post on its multiple social media channels.
Holders of famous and profitable trademarks – such as Red Bull – do not want anyone riding on their success. It is logical that Red Bull should take a strict approach to trademark infringement. However, the open letter quickly went viral online and was reported by several traditional media outlets. The Washington Post published the open letter in full and even told readers where they could buy Old Ox beer, demonstrating how the dispute quickly became a PR coup for the company.
By playing out its trademark dispute online, Old Ox Brewery rallied consumer support and profited from a successful crowdfunding campaign. Whereas Red Bull was portrayed as a “Red-Bully” brand looking to make an example of a smaller company.
The diversity of social media has introduced challenges and uncertainty around many aspects of intellectual property law – and the availability of trademark protection for hashtags is no exception. Brands use social media and online marketing tools to share and reach a broad audience – but the more successful a brand becomes, the less control a brand may have online.
When a company delivers an online competition or campaign – with a brand focused hashtag – the conversation quickly becomes public property. Brands have little control over whether Twitter users react in a positive way.
Trademarks should be used to designate the origin and quality of goods and services. Brand owners need to maintain tight control over the use of their brand by others. In the age of social media this could mean protecting hashtags that relate to your brand.
Marking brand territory
There is some disagreement among the United States Patent and Trademark Office (USPTO), the courts, and commentators about whether hashtags can be protected by a trademark. In its Trademark Manual of Examining Procedure (TMEP), the USPTO states that a mark consisting of the hash symbol or the word “hashtag” can only receive trademark protection if it serves as a source-identifier. The USPTO maintains that hashtag marks “generally” do not qualify as source-identifiers. Their main function is to “facilitate categorisation”. The USPTO, however, does not take a definitive position on whether hashtag marks are protectable – accepting a number of hashtag marks for registration, while rejecting others.
Brands that have successfully registered trademarks as hashtags include: #HowDoYouKFC (KFC Corporation); #BlameMucus (MUCINEX brand medications); #BestFeelings (S.C. Johnson). In these cases, the USPTO concluded there was enough evidence of the hashtag mark acting as a trademark and not merely as a means of on-line searching.
Where do brands stand now?
Social media has evolved into a prolific marketing tool. By logging into social platforms, brands have almost instant access to a consumer audience of millions and the opportunity to build a personable, online persona for a brand. Social media remains largely ungoverned and free speech rules mean brands have very little control over what is said about them and to who.
To date, patent and trademark offices have failed to standardize laws around enforcing trademark rights and answering definitively whether hashtags can be trademarked. As social media’s commercial relevance continues to increase, legal professionals are faced with a growing number of enforcement and infringement concerns. IP specialists will likely spend an increasing amount of time focussed on issues around social media, particularly educating the rest of the business (including marketing and product departments) around IP law and best practice. Every brand that is actively looking to use social media as a marketing platform (which is essentially every brand globally) will need to consider the IP issues and how close co-operation between the IP department and marketing teams will be an essential part of the IP lawyer’s role in the future.
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