Brand Management on the Internet. March 5, 2015 Edward T. White \ Peter C. Kirschenbaum

Transcription

1 Brand Management on the Internet March 5, 2015 Edward T. White \ Peter C. Kirschenbaum

2 Before we begin... Reminder that phone lines are muted Direct your questions to the Chat box or the Q&A box (to host/presenters) we ll cover at the end as time allows CLE forms have been distributed codes to be announced during the program If you d like to join our IP Distribution list, just send an to the below and we ll get you added Any questions seminars@leclairryan.com 2

3 Today s presenters Ed White Washington, D.C. Peter Kirschenbaum New York, NY 3

4 Why Manage and Protect Your Brand? Your brand identifies your products and services. Your brand associates your products and services with the goodwill and loyalty you have earned with your customers. If developed, maintained and enforced, you may maximize brand equity and monetize your brand through licensing arrangements. 4

5 World s Most Powerful Brands 1. Apple Inc. 2. Microsoft Corporation 3. The Coca-Cola Company 4. International Business Machines Corporation 5. Google Inc. Source: Forbes, October 22,

6 Brand Monitoring - What Should Concern You? Trademark and Service Mark Infringement Trademark Dilution and Tarnishment Trade Dress Infringement Copyright Infringement Trademark Misuse Domain Name Infringement False and Misleading Advertising Brand Reputation Brand Abuse 6

7 Brand Management and Protecting Your Brand Today s CLE Focus Areas What to consider in the new generic top level domain (gtld) name roll-out Strategies to monitor and protect trademarks in the new gtld environment Use of third party trademarks in advertising Use of competitor trademarks as advertising keywords in Internet promotions Strategies to monitor and protect brands online and in social media. 7

8 The New gtld-generic Top Level Domain Program The portion of a domain name to the right of the dot (e.g.,.com,.net,.org) Currently about two dozen gtlds Purpose: To increase competition and choice in the domain name space by inviting brand owners, industry groups and others to apply to own and operate their own gtlds Launched In 2008 by ICANN (International Corporation For Assigned Names & Numbers) Responsible for Internet Assigned Numbers Authority ( IANA ) pursuant to agreement with U.S. Commerce Department ICANN has authority to create new gtlds and delegate them to registries 8

9 Examples of Proposed gtlds Internationalized Domain Names (IDNs) / Non-Latin Characters: site ) (Arabic for موقع 手 机 (Chinese for cell phone ) Geographic gtlds.berlin.nyc Community gtlds.bank.insurance Brand gtlds.barclays.marriott 9

10 Two Key Questions for Brand Owners regarding the new gtld Program Am I interested in purchasing domain names in any of the new gtlds? How may I protect my trademark and brand from infringement in the new gtld environment? 10

11 gtld Applications by the Numbers 1930 applications received January-June applications proceeding through approval process 521 new gtlds delegated 828 Registry Agreements executed 339 Sunrise Periods completed 272 Claims Periods completed 11

12 Sunrise Period Pre-Launch period - usually 30 days Occurs before the general public can purchase domain names in the gtld registry Trademark owners who: meet the eligibility requirements of new gtld registry; and have registered their marks with the Trademark Clearinghouse may purchase domains names that match their marks during Sunrise Period 12

13 Sunrise Periods Closing in March 2015.tirol.poker.firmdale.pharmacy.alsace.tires.flowers.wedding 13

14 Claims Period Pre-Launch period of, at least, first 90 days of general availability Anyone applying to purchase domain name in new gtld registry that matches a trademark recorded in Trademark Clearinghouse will be notified Notification will not block domain name purchase If notified applicant registers domain name, Trademark Clearinghouse will notify trademark owner(s) with matching records in Clearinghouse that applicant has registered potentially infringing domain name 14

15 First of Two CLE Codes 15

16 Claims Period Closing in March 2015.mini.gal.ltda.paris.eus.business.network.pizza.immo.auction.software.bzh.dentist.rehab 16

17 Trademark Clearinghouse Centralized database of verified trademarks Operated by Deloitte under contract with ICANN Trademark owners must submit trademarks to Clearinghouse and keep Clearinghouse submissions active Basic cost: $150/Year 17

18 Important Trademark Clearinghouse Submission Requirements Registered trademarks only Must be on Principal or Primary Register for applicable jurisdiction (U.S. Supplemental Registrations not eligible) If design elements are included in registered mark, then word elements must predominate and be clearly distinguishable from design elements 18

19 Benefits of Filing in Trademark Clearinghouse SUNRISE SERVICES: trademark owners have first right to register marks during Sunrise Period TRADEMARK CLAIMS SERVICES: In effect only during first 90 days of general availability Domain name applicant receives warning notice if it applies to register a domain name that matches trademark in Clearinghouse Trademark owner notified if applicant continues attempt to register domain name despite Warning Trademark owner is permitted, but not required, to take action against applicant ONGOING NOTIFICATION SERVICE: Remains in effect beyond original Trademark Claims Service Period Trademark owner notified if party activates domain name in new gtld that exactly matches trademark recorded in Clearinghouse 19

20 Example of New gtld -.bank September 25, 2014: Registry Agreement executed between gtld registry services and banking industry group Current ICANN status: Delegated May 15 - June 14, 2015: expected Sunrise Period June 15, 2015: expected beginning of general availability Domain name registration will be open only to verified members of banking community Verification process will include charter and/or licensure verification through applicant's local and/or national regulators Enhanced security requirements promised 20

21 Lanham Act: Trademark Infringement Elements 1. Plaintiff owns a valid and legally protectable mark; 2. Defendant is using the mark, or a confusingly similar mark, in commerce, without permission of Plaintiff; and 3. Defendant's use of the mark in commerce is likely to cause confusion, mistake or deception as to who actually is the source of either the plaintiff's or the defendant's products. 21

22 When May You Use Another Party s Trademark? General Rule - You may use another Party s trademark as long as you do not: Create a likelihood of confusion as to the source of the goods or services; Dilute or tarnish the other party s famous mark; or Engage in unfair competition by deceiving consumers as to your affiliation, connection or association with another party or by falsely suggesting sponsorship or approval by another party. 22

23 Two Fair Use Defenses to Third Party Trademark Use Descriptive Fair Use - Using a trademark as a descriptive word rather than as a source of origin (e.g. apple to describe fruit rather than to identify tech company; chase as a verb rather than to identify a multi-national bank) Nominative Fair Use - Using another party s trademark to identify the other party s goods or services, but in a non-confusing manner Three Requirements: 1. The other party s goods or services are not readily identifiable without using their mark 2. Use of the other party s mark is limited to what is needed to identify the other party s goods or services 3. The other party s mark is not used in a way that suggests sponsorship or endorsement by the other party 23

24 Practice Pointers: Use of Third Party Trademarks Consider asking for consent to use third party trademarks Where available, follow third party trademark use guidelines Example: Limit use of third party trademarks to word marks versus stylized or logo marks Ensure comparative advertising claims using third party marks are literally true and may be substantiated. Ensure comparative advertising claims do not misrepresent nature, character or quality of products and services. Ask the Golden Rule question If the other party were to use your mark in the manner you contemplate using the third party mark, would you object? 24

25 Keyword Advertising Keyword advertising is linked to specific trademarks, words or phrases. Advertisers pay search engines to display certain advertisements when individuals type certain trademarks, words or phrases into search boxes. Google earned in excess of $42.5 billion in revenue from its AdWords program in

26 Tactics to Resolve AdWords Dispute with Google Do not waste time suing Google it has never lost a final decision on the merits as to whether its AdWords program constitutes a Lanham Act violation. Use Google s complaint procedure if keyword advertising is deceptive or includes listings for counterfeit goods. Google s policies do not permit comparative advertising use Google s complaint procedure to initiate take-down of AdWords ads that include third party trademarks. 26

27 Tactics to Resolve AdWords Dispute with Competitors Yes, it is use in commerce of your mark but this alone does not entitle you to relief. Fair and accurate comparative advertising is permissible, but false and misleading comparative advertising is actionable. Identify counterfeit listings and advertisements that mislead consumers into falsely believing there is an affiliation, sponsorship or endorsement between parties. Explore and assert federal and state unfair trade practices claims. 27

28 Social Media Facts in % of time spent online is on a social network (Experian) 25% of smartphone owners ages say they can t recall the last time their smartphone wasn t next to them (MarketingProfs) Facebook has 1.11 billion monthly active users (Facebook) Twitter has over 550 million users (Statistic Brain) More than 1 billion unique users visit YouTube each month (YouTube) 100 hours of video are uploaded to YouTube every minute (YouTube) YouTube reaches more US adults ages than any cable network (YouTube via Nielson) There are more than 2.1 million LinkedIn groups (LinkedIn) LinkedIn has a lower percentage of active users than Pinterest, Google+, Twitter and Facebook (jeffbullas.com) Pinterest has approximately 50 million users (Reuters) 40 million photos are uploaded to Instagram per day (Instagram) 93% of marketers use social media for business (Social Media Video) 28

29 Social Media Considerations Social media networks make it very easy and cheap for infringers to promote and sell counterfeit goods. Social media can bolster or damage your brand reputation. Act quickly to minimize damage to brand reputation or lost sales due to counterfeit products. Make use of internal policies and procedures in social media and auction sites to respond to trademark infringement, counterfeit and brand reputation damage. Remember that your actions will be magnified and scrutinized in social media networks act reasonably. Comply with applicable law when using social media. Comply with applicable terms of use, user agreements or other website policies. 29

30 Online Brand Monitoring and Policing Tools Trademark Watch Services (e.g. Thomson CompuMark, CT Corsearch) identify trademark applications for confusingly similar trademarks. Domain Name Watch Services (e.g. Thomson CompuMark, CT Corsearch, Marksmen) identify domain name registrations that include proprietary trademarks. Online Brand Monitoring Services (e.g. Marksmen and Kessler International) identify counterfeit postings, trademark misuse, copyright infringement and brand abuse. Google, Yahoo and Internet Alerts cost nothing to clients but provide valuable information regarding counterfeit postings, trademark misuse, copyright infringement and brand abuse. Social Media (e.g. Facebook, Twitter) can be monitored internally to identify trends in brand reputation and brand abuse. 30

31 Second of Two CLE Codes 31

32 Questions? Edward T. White Peter C. Kirschenbaum

33 Disclaimer This slide show provides general information and is not legal advice and should not be used or taken as legal advice for specific situations. You should consult legal counsel before taking any action or making any decisions concerning the matters in this show. This communication does not create an attorney-client relationship between LeClairRyan, A Professional Corporation, and the recipient. Copyright 2015, LeClairRyan, A Professional Corporation. All rights reserved. 33