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Without question, trademarks are valuable business assets, and in some cases, they are worth billions. Forbes media publishes an annual list of the 100 most valuable trademarks. In the 2020 list, Apple had the most valuable brand (which includes all of its various trademarks) calculated to be worth a whopping $241.2 billion and contributing $260.2 billion to Apple’s annual revenue. To top five are all tech or internet-based trademark brands (Apple, Microsoft, Amazon, Google, and Facebook). Samsung comes in at number seven and more traditional retailers and businesses round out the top ten: Coca-cola, Disney, Louis Vuitton, and McDonald’s. A list like this is a good annual reminder that EVERY business should have trademark and brand strategies. A “brand” can be seen as consistently-used and interlinked trademarks, copyrights and other intellectual property. Trademarks and brands create and nurture customer loyalty and cement market share and create easier paths to enter new markets channels and offer new products.
One of the most interesting facets of famous and valuable trademarks is how they are used online. Indeed, in this internet age, one can argue that how a trademark is used online is precisely how a trademark can become worth billions of dollars. For smaller businesses and younger, less famous trademarks, many lessons can be gleaned. Here are some of the ways in famous trademarks are used online
Trademarks as Domain Names
This is a bit obvious, but it is still worth highlighting. Every business with a valuable trademark should be using the trademark as an internet domain name. The famous and valuable brands to this and, importantly, rigorously police domain name registrations to prevent cybersquatting. This is particularly important for luxury brands like Louis Vuitton.
Trademark as #Hashtag
Top brands also have developed successful strategies for using their trademarks in Twitter #hashtags. Sometimes #hashtags are business-related, like #Applesupport (for Apple’s customer support department) or #appleiphone or #appleapps or #applemusic. Other times, the #hashtag is meant to convey a broader message like #appleiscool.
Consistent and Constant Trademark Use
All of the top trademarks have strong strategies for consistent and constant use of their trademarks online. All websites and webpages contain repetitive use and consistent use of trademarks. These online strategies are dovetailed with how the trademarks are used for tangible products and in physical stores.
Influencers
Over the last decade, many of the top trademarks have turned to using online influencers to drive sales. This is a modern variant of using a Hollywood or sports celebrity to make a brand or product seem exciting and “in.” Louis Vuitton is a good example here. In 2019, the company launched a new Pont Neuf handbag. The company hired various influencers like Chau Bui, based in Vietnam with a wide online following in Asia. See media report here.
Fun and Engaging Online Content
Aside from partnering with influencers, top trademark brands also use clever and fun online content via blogs, videos, podcasts and similar to engage with current and potential consumers. Coca-cola has been doing this for years with its advertising campaigns. Examples include its annual Christmas campaigns involving Santa and the ones featuring polar bears. Coca-cola has extended this sort of marketing to its online presence. The idea is to be clever, fun, and relatable, particularly to younger audiences
Varying a Trademark to Signal Alliance
In our computer age, trademarks are virtual which makes them elastic. Yes, trademarks are also rendered into physical forms and attached to physical objects. But, as are used online, they are virtual. This allows trademarks to be manipulated and temporarily changed. Many of the top brands use this trademark “elasticity” to signal alliance with social justice causes. If you have questions about trademarks or service marks, need help creating and registering a trademark/service mark or if you are facing trademark/service mark litigation, contact the proven trademark litigators at Revision Legal at 231-714-0100.
Famous trademarks receive protections beyond the standard likelihood-of-confusion analysis. Under the Federal Trademark Dilution Act, codified at 15 U.S.C. § 1125(c), the owner of a famous mark may seek an injunction against commercial use that causes dilution by blurring or tarnishment—regardless of competition between the parties and regardless of any likelihood of confusion.
Dilution by blurring occurs when a similar mark weakens the association consumers make between a famous mark and its source. Dilution by tarnishment occurs when a mark is associated with poor-quality goods or portrayed in a derogatory manner. The Trademark Dilution Revision Act of 2006 requires only a likelihood of dilution—correcting the Supreme Court’s earlier Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003) holding that had required proof of actual dilution.
A competitor purchasing a brand’s trademark as a search keyword—triggering their ad when users search the brand name—has been extensively litigated. In Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011), the Ninth Circuit clarified that the multi-factor likelihood-of-confusion analysis applies to keyword advertising, and that sophisticated internet users who search specific brand names are less likely to be confused by adjacent sponsored ads. Trademark owners with famous marks have stronger claims, particularly when competitors use identical marks in the advertisement text itself.
Social media presents distinct trademark enforcement challenges. Username squatting—registering a brand’s name as a social media handle to extract payment or direct traffic to a competing page—may violate platform terms of service as well as the ACPA. Most major platforms have brand protection programs: Meta offers a Rights Manager system, X has a trademark reporting process, and Instagram provides an IP reporting portal.
Fan pages, parody accounts, and commentary accounts require nuanced analysis. Courts require that a parody mark simultaneously call to mind the original and make clear it is a parody—the test from Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). Accounts clearly labeled as satire and operated non-commercially typically fall within First Amendment protection, while accounts that mislead followers about brand affiliation do not.
Trademark rights require active enforcement. Courts have recognized that a trademark owner who fails to police its mark may face acquiescence or laches defenses from infringers. Effective online trademark monitoring includes:
Contact the trademark litigators at Revision Legal at 231-714-0100 to develop an online brand protection program.
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