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October 29, 2020

Stroock Client Alert

By: Laura Goldbard George, Binni N. Shah

Imagine you are browsing various social media pages and other online content, and you come across a website that looks like it could belong to your company – it uses your company’s name, your company’s logo, has a very similar color scheme, and offers similar goods and/or services as your company does, or has a very similar URL to your company’s.  Or, the website that you come across is a Facebook profile, by way of example, having a similar account name as your company and using images of your products and/or services.  However, these websites and accounts do not belong to your company, and the uses of your name and logo (to the extent that they are protected by trademark law) appear to constitute trademark infringement and unfair competition.

In certain instances, these websites are designed to closely mimic the website or social media profile of a legitimate business for the purpose of confusing visitors regarding the propriety of the site, and allowing the owners of these websites to obtain money and/or personal information from the visitors under false pretenses.  These scenarios are becoming all too common, and in particular, during the COVID-19 Pandemic.

In 2019, Facebook received approximately 120,000 reports of trademark infringement and corresponding requests to remove content—a 33% increase over the amount received in 2018.  Instagram, on the other hand, also received approximately 120,000 reports of trademark infringement and corresponding requests to remove content in 2019—an 83% increase over the amount received the prior year. On average, Facebook and Instagram both removed the requested content about 50% of the time.

The tools offered by social media sites to report trademark infringement and request removal of offending content may be most successful for obvious cases of trademark infringement such as the scenarios posed above, provided a trademark registration is owned, because such cases may also be a violation of the applicable terms of services.  In fact, recently, the social media sites seem to be enforcing violations of the applicable terms of services more often than trademark infringement.  

On the other hand, the tools offered by registrars to remove an infringing website vary significantly from registrar to registrar. For example, at least one registrar states in its policies that other than forwarding the trademark infringement complaint to the domain registrant, it will not take any additional action (unless required to by an order of a court or other judicial body).  On the other end of the spectrum, another registrar’s policies indicate that it will conduct an investigation upon notice of the infringement, and act in accordance therewith.  Accordingly, in addition to contacting a registrar to remove an infringing website, a company may also consider legal action, alleging, inter alia, trademark infringement, whereby the company can enjoin the use of and/or request transfer of the domain name, as well as obtain damages, or a proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy (UDRP), whereby the company can enjoin the use of the domain name and/or request transfer of the domain name.

It is important for any company that has invested significant time and expense to develop its brand to police social media, including but not limited to Facebook, Twitter, Instagram, LinkedIn, and YouTube, and the Internet at large for unauthorized uses of its brand by either monitoring social media themselves or engaging a trademark and brand watching or monitoring service.  By alerting a company to the unauthorized uses, and in particular, uses by others engaging in fraud, the company may be able to avert any damage to its reputation by seeking to have such content and/or websites taken down.

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For More Information:

Laura Goldbard George

Binni N. Shah

This Stroock publication offers general information and should not be taken or used as legal advice for specific situations, which depend on the evaluation of precise factual circumstances. Please note that Stroock does not undertake to update its publications after their publication date to reflect subsequent developments. This Stroock publication may contain attorney advertising. Prior results do not guarantee a similar outcome.

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