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Last updated on: December 22, 2023
Enforcing trademark rights, especially in the online world, can be frustrating. It might seem that just when you stop one infringer, another pops up.
Companies struggle with how to report trademark infringement in a way that is effective and efficient. The costs to pursue every infringer on every platform are prohibitive, but not enforcing your brand rights will ultimately harm the brand.
This article discusses how to combat infringement through online and offline methods.
A member of a company’s marketing team emails the legal department after seeing the company’s trademark in a third-party social media post. “They shouldn’t be allowed to use our brand like that,” the employee insists. Is it infringement? The answer is a resounding, “It depends.”
Whether there is infringement depends on whether a consumer is likely to be confused about the source of the goods or services offered under the mark. For example, a recent United States Supreme Court case held that a company selling a squeaky dog toy resembling whiskey purveyor Jack Daniel’s bottle design and trademarks could be liable for trademark infringement. Even though the toy poked fun at Jack Daniel’s brand, the use of similar marks could confuse consumers about the source of the dog toy.
U.S. courts analyze trademark infringement using a multi-factor “likelihood of confusion” test, which explores the manner of the use, the nature of the infringer’s and trademark owner’s products, and more. It’s a complex equation that sometimes takes years and hundreds of thousands of dollars to resolve in court.
However, a legal department deciding whether to take action must quickly analyze the issue. What’s more, the legal expert often isn’t the one who first notices the potential infringement. Employees, or even brand-loyal customers, often spot third-party use of company trademarks and ask, “Is this infringement?” The legal team needs to educate others within the company about what trademark infringement is and how to report trademark infringement. Red flags include sales of another company’s products under your brand or a very similar mark and third-party statements that could mislead customers about your company’s brand.
Information you may need to report trademark infringement through an online platform often includes:
There are a range of trademark enforcement options. The legal department should understand the company’s priorities and budget when deciding what action to take. There are pros and cons to each enforcement procedure listed below:
1. Online marketplaces
Companies in a range of industries – from fashion to pharmaceuticals – should consider running regular searches, either in-house or through a marketplace protection service, to see what is being sold using your company’s trademarks.
Marketplaces like Amazon, eBay, and Etsy have online portals or forms that allow you to quickly submit information about suspected infringement. Some marketplaces allow an IP owner to set up a profile to list your intellectual property rights and educate marketplace users, like eBay’ Verified Rights Owner Program.
However, most marketplaces will not conduct an in-depth analysis of whether there is infringement. The instances of infringement reported through marketplace portals should be straightforward and easily understood.
2. Social media
Bear in mind that you can’t stop legitimate criticism of your brand. A company’s legal and marketing teams should communicate regularly about when and how to respond to critical social media posts in a way that reflects your brand values.
But if social media users are misleadingly using your company’s trademark, such as selling counterfeit goods or posting fake advertisements, you may need to take action.
Many social media platforms, including Facebook, TikTok, X, and others, have forms you can submit if you believe a user is infringing your company’s trademarks. As with the marketplace reporting forms, it is not likely that a social media site will take action if it has to make a judgment call on whether or not there is infringement. These systems are set up to handle simple infringement allegations.
Here are some step-by-step guides to report infringement on social media platforms:
3. Search engines
With the ongoing importance of search engine optimization (“SEO”), brands should monitor how others are using their trademarks in Google Ads and other paid search engine ads. Google, as well as Microsoft’s Bing and Yahoo search engines, have portals for IP owners to submit claims of trademark infringement.
Note that the law around trademark use in search engines is complex, and a search engine might only take action in limited circumstances. For example, according to Google’s trademark ad policy FAQ, Google will not restrict a company from simply purchasing a competitor’s trademark as a keyword. That means that XYZ Company can purchase “ABC Company” as a keyword, although its ad text cannot use “ABC Company” in a misleading manner.
While it is important to monitor search engines, this is just one tool in the brand enforcement toolbox. Review the search engine’s guidelines carefully before you submit a trademark infringement notice.
4. Domain disputes
Another tool for online enforcement, a domain dispute can be used to stop a website that is using your company’s trademark in the URL for misleading purposes. The Uniform Domain Name Dispute Resolution Policy (“UDRP”) covers global top-level domains (“gTLDs”) including .com, .net, and .org, as well as newer gTLDs like .travel, .info, .biz, and others.
In the UDRP process, the trademark owner submits a complaint alleging the domain name owner’s bad faith registration and use of a domain containing the trademark owner’s registered trademark. That is, XYZ Company might file a domain dispute against the owner of the domain name XYZBrandwidgets.com that directs to a website selling not XYZ Brand widgets, but ABC Brand widgets.
A domain name dispute is heard before an arbitrator. If a trademark owner wins the domain name dispute, the domain is either canceled or transferred from the claimed infringer to the trademark owner. There are no monetary damages available. The filing fee can be in the thousands of dollars. While the process is quick and simple compared to litigation, it will likely require more time, effort, and money than the takedown notices discussed above.
If a claimed infringer is importing counterfeit or other infringing goods from outside the United States, you may also be able to report trademark infringement through the International Trade Commission (“ITC”) and U.S. Customs and Border Protection (“CBP”).
As a first line of defense, a company can record its U.S. trademark registrations with the CBP. Recording with the CBP gives the agency the authority to seize and even destroy infringing goods entering the United States. The owner of a recorded registration also can educate the CBP about its trademarks and how to distinguish genuine goods from fakes.
Similarly, a trademark owner can ask the ITC to investigate a potential trademark infringement. Filing a request with the ITC does not guarantee that it will institute an investigation, there are specific requirements for a request, and it can be a complex procedure. A successful ITC claim may lead to the exclusion of the infringing products from the U.S.
6. Offline trademark enforcement
This category includes several enforcement tools, ranging from cease and desist letters to trademark litigation.
Before sending a cease and desist letter, a company should be aware that threatening litigation through a demand letter can open the door for the recipient to file a complaint for declaratory judgment, asking the court to issue an order stating that its activities are not infringing. In addition, there are countless horror stories about heavy-handed cease and desist letters ending up as fodder for internet ridicule. Assume that any notice or letter your legal department sends could end up posted online.
Litigation generally is a last resort when other measures have failed to address a significant infringement concern. One major pro is that litigation can lead to an award of damages. A court-ordered injunction ordering the claimed infringer not to continue to use the mark can be a valuable remedy as well.
For each reporting method discussed above, the trademark owner needs to keep track and follow up as necessary. Failure to do so could result in weakening or waiving your rights.
Trademark infringement can lead to financial loss, which may be quite difficult to recover, even through litigation.
In particularly egregious instances of trademark infringement, such as counterfeiting, the harm to the brand can be especially great. The new Revenue Recovery Program from Red Points offers a comprehensive solution by employing world-class AI technology and expert legal partners. It aims to shut down counterfeiters’ accounts permanently, freeze their funds, and recover compensatory fees within 3 to 6 months. This program involves scanning global marketplaces, identifying high-profile counterfeit sellers, collecting evidence, and undertaking legal action to recover funds, effectively mitigating the financial impacts of trademark infringement.”
Reporting trademark infringement should be a multi-faceted program, including monitoring and reporting to the marketplaces and social channels that are important to your brand and even using litigation when necessary. Red Points can help with these efforts with our Revenue Recovery Program and other solutions. If you’re tired of the endless game of chasing infringers, contact us to request a demo.