Trademarks and Social Media: What Small Business Owners Need to Know
Josh Gerben – July 6, 2016
As a small business owner, there’s no doubt that social media sites, like Facebook, may play a big role in your marketing and sales plans. With 1 out of every 5 page views in the US happening on Facebook, and 42% of marketers saying that Facebook is critical to their business, it’s easy to see why business owners are turning to social media sites as a way to connect with their audiences.
But before you jump into social media with both feet, you need to have your legal ducks in a row. And specifically, to protect your business in social media and beyond, you should understand the importance of registering for federal trademark protection for your business name.
Here are a few tips on how small businesses should handle trademark issues in the world of social media.
Work with a pro to perform a trademark search and file an application.
Regardless of if you plan to keep your business to a single, manageable location or are interested in growing your business across the state or the country, it’s important that you invest the time and money into protecting your name via a trademark registration. Receiving a federal registration for your trademark name ensures that you have the sole rights to use a particular name within your industry, and this will help prove your ownership of the name if someone claims that they used a similar name first.
Before deciding on the name of your new business, ensure the name you choose is eligible to receive a federal trademark registration. This is one of those situations where cutting corners can really cost you in the long run—make sure you hire a trademark attorney to perform a comprehensive trademark search and attorney opinion letter. A professional level trademark search goes well beyond any search you can perform via Google or the United States Patent and Trademark Office (USPTO) website, and allows you to move forward with your business and branding with more confidence.
Make social media registration a priority, even if you don’t plan on being active.
Once you have properly searched and registered your trademarks, you should always remember to proactively register your trademark name on top social media channels—like Facebook, Twitter, Instagram and Pinterest—regardless of if you plan on being active in those channels. By “reserving” your name, you’ll have it available for you should you decide to market or connect with customers via a particular social media channel. You’ll also be avoiding the chance of:
Customer confusion: If you own the trademark for PATRIOT EAGLE SOAP COMPANY and another business starts posting about their offerings on Facebook using the PATRIOT EAGLE COMPANY name for bath products, it’s easy to see where current and potential customers may become confused. Reserving your name keeps others from using it.
Jeopardizing your brand reputation:To build on the scenario mentioned above, imagine that the other PATRIOT EAGLE COMPANY business is found to be using cancer-causing chemicals in its product line. Or perhaps they are simply taking a long time to fulfill orders. Regardless of the issue, any negative press or reviews on this brand can end up reflecting poorly on your brand, harming your reputation and your sales in the process.
Monitor social media for evidence of infringement.
To keep your trademark active and retain your exclusive rights to use the name, you must keep an eye out for other businesses that may be accidentally or intentionally infringing on your name, in social media or any other channel. And this goes not only for your exact name (PATRIOT EAGLE SOAP COMPANY) but also for a name that is potentially confusingly similar (PATRIOT’S EAGLE, PATRIOT FALCON SOAP, etc.).
So, for example, if you have a Facebook page @PatriotEagleSoaps for your business name and registered the business name with the federal government, you would likely be able to prevent someone else from using the Facebook page @PatriotsEagleSoap or even @PatriotFalconSoap. By using a name that is confusingly similar to yours for related products, the other page owner could be infringing on your trademark—and you can request their page be removed. However, any request to remove a page comes with significant legal risks and should not be made without first contacting an attorney to evaluate the claims.
Take action if infringement occurs.
If you do see evidence of infringement on a trademark you own, your trademark attorney will likely suggest notifying the social media site via its trademark infringement form. All of the major social media sites including Facebook, Twitter, LinkedIn and Instagram have online infringement notification forms that allow trademark owners to identify potential infringement issues and submit evidence of your trademark ownership in the form of your federal trademark registration number. In most cases, simply notifying the social media site of the infringing profile and providing proof of trademark ownership is enough for the site to shut down the infringing entity’s page. However, if you aren’t able to reach a satisfactory resolution, you should work with your trademark attorney to determine next steps.
Prepare for social media by getting your trademark affairs in order.
Whether you plan on slowly dipping your toes into the world of social media or you’re going to jump right in, make sure that your business is ready for prime time by getting your trademark affairs in order. Hire a trademark attorney to help you search for available names and file an application. Then, claim your names on the major social media sites to prevent others from using them, regardless of your short- or long-term social media plans. And finally, keep an eye out for other businesses that may be infringing on your trademark, and take quick action if you find evidence of infringement. By following these steps, you’ll be setting your business up for success in the world of social media and beyond.
ABOUT THE AUTHOR(S)
Founder of the Gerben Law Firm, PLLC, Josh Gerben is U.S. trademark attorney who has represented clients in more than 5,000 trademark filings with the United States Patent and Trademark Office. Featured in a variety of national news outlets including FOX News, NPR and The Wall Street Journal, Josh was named 2009’s #3 trademark filer in the US by Trademark Insider.
Founder , Gerben Law Firm, PLLC