Case Study – Trademark Infringement & Reputation Event
Preparing for a brand reputation issue online proactively is of course the best way to prevent a bad day. Most companies today do not have a strategy and action plan in place to handle a reputation event. In this case study we review a blatant trademark infringement and how we guided the client through resolving the issue.
The first step in a trademark infringement is to send a cease and desist letter to the violator. In the case of a domain, the domain violating the mark has to be in use before it is a true violation. Sometimes the violators are truly unaware that they are violating trademark law and they respond appropriately to the request in the letter to avoid future litigation. When a violator ignores those requests, actions must be taken even if you do not have the legal resources to litigate.
Our client has an established brand that was in use and demonstrated on their website. The domain included the trademark, and the trademark was located on every page of their website. The violator registered social handles with the trademark, leveraged hashtags with the trademark, and launched a website on a domain that was violating the trademark. A clear case of infringement, but the violator refused to remove the offending content and domain.
Litigation is a last resort. It is a costly process and depending on the location and violator you may be going after a business that may not be solvent. After considerable expense, you win your case and fees and damages are assigned, but you never receive payment. The process takes a long time and the expense again is high. Luckily there are other actions you can take that can have near immediate results.
The first step we took for our client was to obtain the registration information for their trademark and contact all Social channels through their forms for submitting trademark infringement. Facebook is fast…the offending content was removed in under 8 hours. Other channels take more time but act expeditiously when it is a clear violation.
After the Social channels were handled we walked the client through the WIPO process for filing a UDRP complaint. There is a cost associated with this complaint, but it is far less than litigation and the decisions and actions from the decision occur quickly. This process is used to force the violator to cease the use of the trademark in domain registrations. Once the decision was made in our client’s favor we submitted the documentation to the registrar, web host, and to the search engines to request removal.
The violator was also utilizing Google Adwords to capitalize on our client’s mark and we walked the client through filing a trademark infringement and how to allow certain partners to continue use in the advertising platform.
The last step for our client was to clean up the affiliate and content sites that were unaware the violator was advertising while violating trademark law. This process required tracking communications and sending cease and desist notices to all the website owners. In these cases we assume good intent in our communication until the website owner refuses to cooperate. For websites that refused to cooperate, the hosting company was provided the UDRP documentation along with the trademark registration details and the hosting accounts were suspended.
Protecting your brand online is not the last step when launching a business. Commit to your business and secure trademarks early in the process of launching the business. Prepare your action plan for violators and defend your brand. If you need assistance, we are an email or phone call away!