ABA Business Law Article: Online Use of Third Party Trademarks

Linda A. Friedman penned an article in the February edition of the ABA’s Business Law Today (“Online Use of Third Party Trademarks: Can Your Trademark Be Used without Your Permission?“) where she noted that, “The explosion of user-generated content on the Internet, not to mention the proliferation of domain name registration options and the competition among advertisers and other businesses to attract visitors to their websites, has increased the burden of trademark owners to police the online use of their trademarks by others. Consumers, competitors, and others are increasingly posting comments, ads, or other content on social media, in which they freely use trademarks owned by another party for their own purposes. These purposes are often at odds with the trademark owner’s interests, such as diverting internet traffic to the user’s website or disparaging the trademark owner or its products in blogs over which the trademark owner has no control.

“However, simply because the use of another’s trademark is unauthorized by the trademark owner does not make it an infringing use. Trademark owners must not only be diligent in monitoring use of their trademarks online, but also recognize the differences among infringing uses to be challenged, questionable uses to be further monitored, harmless uses to be ignored, and uses that may be annoying, but do not infringe.

“Likewise, anyone who chooses to use a trademark without the owner’s permission should be mindful not only of the potential liability for infringement, but also of other potential consequences, such as violation of laws other than trademark laws or violation of a social media platform’s terms of use, leading to loss of privileges.”

Ms. Friedman provides a valuable overview of trademark issues, including terms of use issues for YouTube, Twitter, Facebook and Instagram; and concludes the article by stating that: “If an online ad, post, domain name, or even hidden text is misleading, deceptive or likely to cause confusion, or if it threatens to dilute a famous trademark, it will and should be challenged. All organizations should monitor online unauthorized uses of their valued trademarks. In addition, if an organization hosts an interactive website that invites customers to post endorsements or other comments, the terms of use should prohibit inappropriate content and the organization should monitor postings for improper trademark uses.

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