How Do You Manage Unauthorized Use of a Client's Trademark On Social Media?

How Do You Manage Unauthorized Use of a Client's Trademark On Social Media?

When a client's trademark is being used without permission on social media, it's crucial to know the steps to take. We've gathered insights from top industry professionals, including a Social Media Manager and a Senior Trademark Attorney. From navigating trademark infringement on social media to developing an enforcement policy, here are four expert strategies to handle these challenging situations.

• Navigate Trademark Infringement on Social Media
• Assess Infringement and Advise Legal Action
• Direct Message and Report to Social Platforms
• Report Infringement and Develop Enforcement Policy

Navigate Trademark Infringement on Social Media

It can be surprising and difficult to navigate how quickly trademark infringement can happen on social media, and my recent professional experience as a social media expert has seen a huge rise in the overall number of occurrences in the past year. Here is some context on how this can happen. It is usually inadvertent, and, in some ways, one of the most common reasons it is happening is a good thing. Let me explain.

For years, many companies have been using social listening and machine learning to inform which keywords and hashtags are the most popular, get the most engagement, and generally seem to be associated with an overall positive sentiment. As some companies and individuals start to use generative AI to write social media copy, similar analysis happens, pulling popular and commonly used keywords and phrases, but many of these efficiency and intelligence tools do not seem to recognize or filter out trademarks. So, if you are in a situation where this is happening, it is, in some ways, a win for the marketing team—their social efforts are influential and can be viewed as "winning" in the social media space.

Does that mean it should be allowed to continue? No, and there are a lot of different approaches that can be taken. While I can't provide a legal perspective on this, I can share my professional perspective as someone who has managed social media for multiple brands. If the infringement is happening through the customers of a business-to-business client, or if the infringements are happening through end-users and fans of the brand, these may be "normal" occurrences that your client may not want to pursue any action on. It could be helping them raise overall brand awareness. Business-to-business clients can even use it as a sales tool ("Hey, we saw that you've been using our trademarked hashtag and are interested in joining our social media movement! When would be a good time to have our sales team connect with you and discuss how we can work together?"). In fact, pursuing action in these cases may cause negative PR for your client, creating a narrative that they are threatening their fans or customers with legal action. If the infringements are occurring through direct competitors, it is likely that your client will want to pursue some sort of action. For smaller infringements, sometimes simply reaching out to the competitor and letting them know is sufficient. In extreme circumstances, a cease and desist or other legal action might be pertinent.

Assess Infringement and Advise Legal Action

The first step is to assess the extent of the infringement and its impact on our client's brand. Then, we advise the client on their legal rights and the potential courses of action, which typically include sending a cease-and-desist letter to the infringer, outlining the unauthorized use and demanding immediate cessation of the trademark use. If the infringement persists, we often file a complaint with the social media platform to remove the infringing content under their intellectual property policies.

Direct Message and Report to Social Platforms

Managing the unauthorized use of a client's trademark is a multi-step process. Oftentimes, directing the client to send a simple, direct message will resolve the issue. If that does not work, most major social media platforms, like Instagram and X (formerly Twitter), have procedures available to report infringement and request the removal of any infringing uses. If these low-cost, preliminary measures fail to rectify the issue, the next step is sending a formal cease-and-desist letter or, ultimately, filing a lawsuit. In any case, advising the client to secure federal trademark registration is paramount, as it bolsters enforcement efforts. It serves as prima facie evidence of ownership and grants nationwide priority rights, enhancing the ability to take legal action against infringers.

Report Infringement and Develop Enforcement Policy

The first step may be to report the infringing use of the trademark to the social media platform. Most platforms have online forms that may be used to report trademark infringement. In most cases, this will be the easiest and quickest way to get the content removed. Depending on the circumstances, a cease-and-desist letter sent to the infringing party may be the second step if the content is not removed from the social media platform.

To address any future infringement in a timely and efficient manner, the client may also develop an internal trademark enforcement policy. Such a policy may incorporate enrolling in a trademark watch service, regular monitoring of social media, and reporting of infringing content on an ongoing basis.