Social Media Trademark Protections

Mindi M. Richter

Mindi M. Richter

One social media issue that continues to rise in popularity is what if anything a client can do when a third party reserves a social media username that is the same or close to the client’s registered trademark.  Although it is no doubt a frustrating occurrence, the answer on whether anything can be done is the same as it is for many legal issues, which is that it depends.  Most social media outlets have policies governing potential trademark infringement and provide an opportunity for a complaint regarding the same to be submitted directly to the outlet.  However, among the elements required to demonstrate trademark infringement are requirements that the third party’s use in fact be use as a trademark promoting a good or service in commerce and that the third party’s use present a likelihood of confusion with the client and its trademark.  Therefore, if the third party has merely reserved the trademark as its username and is not otherwise using it as a trademark and/or in a manner that could cause confusion among the public on whether the third party is the client or somehow related to the client, it is often difficult for the client to take over the username.  This is particularly troublesome with username “squatters” who purposely reserve numerous usernames, not with the intention of actually using them, but rather with the intention of selling them for a profit to others down the road.

In the case of Twitter, this problem is somewhat alleviated through its policy on inactive accounts.  Under the policy, if a user’s account has been inactive for six months or longer, it is subject to removal.  Therefore, if you file a trademark complaint based on a trademark registration through Twitter on a username that is considered inactive, Twitter will provide you with the opportunity to take over the username.  This provides a great option to obtain usernames consisting of your trademarks even when you may not be able to satisfy the elements required for trademark infringement.  It is also a great way to get around “squatters” by obtaining the username without paying the third party money.  While the goal would be to reserve social media usernames consisting of your primary trademarks from the start, at least Twitter’s policy provides one possible avenue to remedy the situation when, for whatever reason, the usernames were not reserved in time.