10 tips you should know about online brand protection and trademark management

For many brand owners, enforcement on social networks is often down to the popularity (measured in active users or web traffic) of social platforms – it’s for that reason that Facebook and Twitter are often the most monitored social websites. Indeed, as described by Jeffrey Fridman, the global legal lead of trademark and brand operations at Accenture, “social media is probably the biggest example of the idea that jurisdictional borders are disappearing, and that suddenly every company is a global company”. But is targeting the biggest social networks really the most effective and efficient enforcement method? Not necessarily, according to Sean Kolodji, senior brand advisor at Incopro. “All brand owners should consider that social networks are used in different places and by different generations,” he explained. “In some countries, the only website they know is Facebook – that’s the entire internet to them. You must also think of what the target audience and demographic is for your brands; older people are more likely to use Facebook most often, middle-aged people are more likely on Twitter, while younger people are on Instagram, SnapChat or even Tiktok.” Therefore, if your brand is especially popular with young people, perhaps prioritising enforcement efforts on Instagram rather than Facebook could be worthwhile.

To save money, decide what really needs to be registered (and monitored)

A recurring discussion point across the events was how to free up budget and reduce costs. For many rights holders, protection is paramount but sometimes it does not make economic sense. One area where this can be the case is slogans. Sophie Anger, associate general counsel, marketing properties, global petcare at Mars Incorporated, observed: “Taglines don’t last very long – they tend to change every two to three years. So it’s not always worth paying for registration as, by the time you have secured it, the business has moved on.” Matthew Kelly, chief intellectual property counsel at CME Group, concurred. Stating: “We learned our lesson with taglines. Even where new people came in and thought they would last forever, those taglines would fall by the wayside.”

Be patient – and maybe make an infographic

Like Bill Murray in Groundhog Day, many in-house practitioners are tasked with repeating the same thing over and over again. Whether it’s explaining basic functions of trademark law to reminding colleagues of the need for clearance searches (often after they’ve set their heart of a particular product or brand name), it can be a tedious process. Indeed, some panellists showed their exasperation in this regard. Jomarie Fredericks, deputy general counsel and chief IP counsel at non-profit Rotary International, said that after explaining stuff “over and over again”, she had “reached a point where I don’t know how to explain it to them again”. She expanded: “I am sometimes asked the same thing for what feels like the 400^th time and it often feels like the most obvious thing. But, of course, it’s not obvious, it’s a matter of not understanding certain nuances of trademark law (such as not owning a mark in every goods and service) and also an acceptance of what the law is rather than what their personal wishlist is. I don’t think they are deliberately trying to obscure the facts, they just simply don’t understand, so I’ve found that you need to be patient, take a deep breath and explain it to them again.” Responding to this quandary, one in-house delegate in the audience revealed they had made a series of infographics to explain various trademark concepts, hosting each on the company’s intranet platform. This approach has been successful, they added, suggesting the visual element could be key in having educations tools that colleagues actually remember. There are a number of free infographic resources online, so this could be a strategy worth pursuing.

Be ready for complaints - but take the higher ground

One little mentioned element of enforcement efforts is the personal backlash that some practitioners receive. Jeffrey Fridman from Accenture explained that “one of the best things” he’s done is “make friends with the social media marketing team” following an infringer targeted him on social platforms (“by saying terrible things about me”). Another example was when an individual linked to a UDRP complaint emailed Fridman offering to sell a domain, which was promptly added as evidence to the UDRP. The individual replied to this by lowering the domain price, which Fridman again added as evidence to the UDRP. Fridman concluded: “He ended up saying I was unethical, and actually BCCed senior leadership to such emails. I realised then that when you go after cybersquatters, they are sometimes just not logical.” Another practitioner had a similar experience, with David Gooder, former chief trademark counsel at Jack Daniel's Properties, saying “a person was trying to make problems by saying what a bad person I was, and actually talked to the equivalent of the National Enquirer of Georgia about me”. For Fridman, when facing off against certain infringers, he advises to “give it to outside counsel – they can handle it”. Sometimes, of course, some partners are a pleasure to deal with – and in those cases, Gooder says Jack Daniel’s often took a non-traditional approach. “If they cooperated, we send them a gift – only a little thing that often costs the company nothing,” he says. “If we were to get a positive judgement in a big counterfeiting case, we would try and find a way to give the money back – for example, in Sevilla, we got $100,000 from counterfeiters and we gave it to a local charity in that area.” Ultimately, says CME Group’s Kelly, rights holders must weigh-up the most effective approach to take: “In terms of infringement, some colleagues say ‘let’s take them golfing’, others say ‘we should bury them’ – there are a lot of delicate things we need to discuss before we decide what action to take.”

Get creative, even if it makes you uncomfortable

The keynote at Managing Trademark Assets USA saw Alexandra DeNeve of Velcro USA elaborate on how the award-winning ‘Don’t say Velcro’ video and campaign, which educated consumers on the risk of genericide when brands are misused, became a reality. DeNeve, who was determined to create a humorous educational campaign, opted “to ask for forgiveness not permission” and started calling advertising agencies in a bid to drive ideas she could take back to the business. However, this took her into a world she had little experience of, and once she had meetings set-up, enlisted a marketing colleague to the cause – with DeNeve attending the pitch meetings “where I gave a primer in trademark law and showed traditional campaigns, and said this is the dry legal message and I need you to make it interesting!”. Her marketing colleague called social media guru Penn Holderness (“something that would never have occurred to me to do”) and the concept was subsequently developed. As the budget for the video came from legal, DeNeve had final script approval and had to overcome a reluctance to incorporate swear words into the video: “I was iffy on the bleeped words but I gave on that, and it was the right call ultimately.” The video, though, was only the start of the campaign. For instance, the company took out search engine adverts wherein people browsing for ‘Velcro shoes’ were told that there is no such thing.

A key follow-up activity was a social media takeover in which, DeNeve recounted, “we found tweets from that day either talking about the video or misusing the term ‘velcro’ and wrote musical responses”. A follow-up video then focused on – and responded to – negative social media posts about the video. Driving the campaign forward took DeNeve into the world of proactive online marketing and saw her make creative decisions that, in some respects, she was uncomfortable with. However, the results are undeniable. Sometimes, moving outside your comfort zone can pay dividends.

Cease and desist efforts need to be collaborative

That there is a risk that cease and desist efforts could go viral is not news to trademark professionals. Over the past few years, both polite and aggressive letters have hit social media streams – with the former being praised and the latter lambasted. A fundamental question that needs to be asked when faced with infringement is what tone to adopt, and in many instances this should not be a solely legal call. Gooder, who in his former role at Jack Daniel's Properties was responsible for the “most polite cease and desist letter ever”, recalls: “If it had a departmental implication we would go to maybe the commercial or regional manager. Often there can be a commercial backlash you may not see coming on. But we have so many issues that if we went to the marketing people every time it came up, they would throw up their hands in frustration. So we would go after the no-brainers, and just give them a list every quarter.” Where other parties are engaged in the decision, or handling the response, one tip is to ensure that the legalese is dialed down. Starbucks Corporation’s Naeve reflected: “If something comes along where we think a letter may get attention we would work with public affairs and work with them to develop speaking points. They aren’t detailed talking points but we give them the heads up – why it is significant, why it may get attention – and supply a prepared response.”

And finally: The quote of the day:

Much of the event discussion focused on brand challenges and how to overcome them. What was evident across both days was how important the work of trademark counsel is – even if the business does not always understand what they do. While one of the sessions took a deep dive into how to ensure the business truly understands the brand function, lack of understanding can be an unexpected positive, joked McAndrews Held & Malloy’s Patrick J Arnold Jr: “The real beauty of working in the trademark industry is that everything is so vague that nobody gets it; so we will always have a job!”