Unauthorized use of a trademark occurs on the Internet frequently and in many forms, and usually involves profiting, either intentionally or unintentionally, from the goodwill associated with someone else’s trademark. However, this use does not always amount to trademark infringement. Unauthorized use of a trademark is an infringement only if the particular use causes potential confusion among consumers. The most common type of confusion is confusion about provenance, which occurs at the time of purchase, but confusion about affiliation, association or sponsorship can also arise, and confusion does not necessarily have to occur at the time of purchase.
Violation can also be based on confusion that creates initial customer interest, even if the confusion has been dispelled by the time of purchase. This so-called mixing of initial interest is a doctrine under trademark law that is designed to address unauthorized use of a trademark in such a way as to attract consumer attention, even though the sale is ultimately not completed as a result of any initial confusion, and courts have found the doctrine to be particularly applicable on the Internet. Examples of unauthorized use of online trademarks that may constitute infringing cybersquatting include; Brands in ad text, keywords, hashtags and meta tags; And fake usernames on social media platforms.
To better understand the different types of cybersquatting, it is important to identify the different parts of a web address:
Cybersquatting comes in four distinct types: field squat, combo squat, typographic squat, and double field. Domain lure is the registration of new domain names that are identical or confusingly similar to a company’s existing trademarks. Combo squatting is the registration of new domain names created by adding words to already registered domain names. Typographic squat is the registration of new domain names with ported letters or common misspellings of domain names already registered. Finally, the doppelganger domain is a new domain name registration that omits the dot between the subdomain and the second level domain. Aside from the domain name itself, there is controversy as to whether using trademarks within a subdirectory also violates trademark law, with some courts holding that a consumer viewing the URL subdirectory would likely experience an initial confusion of interest, while other courts have held The appearance of another company’s trademark in the subdirectory does not imply sponsorship or endorsement.
Cybersquatting can also include domain name blocking, which occurs when the domain name registrar deposits its domain names with the registrar or a parking service provider, which then creates placeholder pages and invites online ad networks to fill them with ads instead of creating a website functional. This then generates money for the registrant when Internet surfers click on links to other sites that are advertised on the stalled page.
Unauthorized use of trademarks in online advertising and social media
Online infringement also occurs through the unauthorized use of trademarks in ad text, keywords, hashtags and as fake usernames on social media platforms. In the early days of the Internet, this type of abuse also occurred with meta tags, which are lists of words that search engines use to index and select website content. But modern search engine algorithms no longer rely on meta tags and courts have recognized that meta tags are outdated in terms of search engine indexing.
Google, Facebook and Twitter together make up more than half of the digital advertising market in the United States and are a natural focus of any company’s enforcement efforts. Each company has trademark policies that prohibit trademark infringement and provide different mechanisms for companies to report potential trademark infringement. Google and Twitter also offer keywords for use in conjunction with their online advertisements, and courts have held that advertising of keywords in conjunction with trademark use in other contexts, such as domain names, ad text or placement, can cause confusion occurs. Facebook and Twitter may also be used for the unauthorized registration of usernames or account names that incorporate or include company branding, a practice known as brandjacking. Unauthorized usernames can then be used to distribute false information about a company, redirect the public to other companies or products, obtain confidential information, or simply prevent the trademark owner from using them as their logical account names for marketing purposes.
Hashtags are widely used on social media platforms to identify or facilitate keyword research or to promote goods and services. But whether using someone else’s trademark along with a hashtag could create confusion and constitute trademark infringement is an open question and case law so far has been contradictory.
Responding to Online Trademark Infringement
There are a variety of options for handling a violation online. When infringement involves domain names, companies can use laws such as the Consumer Protection Act to combat cybersquatting or alternative dispute resolution such as ICANN’s Uniform Domain Name Dispute Resolution Policy. Where the infringement involves online advertisements or unauthorized trademark use on social media, the respective platforms’ trademark policies may be used to report any alleged trademark infringement. Finally, there is always the option to sue in federal court for trademark infringement. The particular enforcement approach should be informed by the facts at hand and the strengths and weaknesses of the various enforcement mechanisms. One drawback of the Anti-Cyberburglary Consumer Protection Act is that it does not prohibit fair use of trademarks or any use protected under the First Amendment. For example, cash or spam sites, also known as “sucks” sites because they are often in the form of “brandXsucks.com”, are likely to be protected by the First Amendment. But the law can provide a starting point for trademark owners to combat domain name parking, such as in the case of parked typos or bulk domain names.
For infringements associated with keywords, trademark owners often have to monitor the use of their own marks. Some companies even resort to purchasing their own branding terms as keywords, as a cost-effective strategy to prevent keyword infringement. Unfortunately, competitors expect this interaction and sometimes use the search engine’s keyword bid system to force the company to pay more than they normally would for the keywords. For infringement related to a hashtag, trademark owners should consider that if their trademark is used as a hashtag and the use is non-commercial, the unauthorized use may be considered fair use by a court.
Allen Loizeh contributed to this article.
© 1994-2022 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, PC All rights reserved.National Law Review, Volume XII, No. 4