Stopping Othersfrom Using Your Trademarks toDivert Traffic to Their Websites

January 2015

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Strategies for StoppingUnauthorized Internet Sales

The Online Reputation & Brand Protection Coalition’s mission is to help businesses protect their online reputations and brands online. The Coalition aims to fulfill its mission by educating businesses on how to protect and defend their reputations and brands online and advocating for increased protections and more effective remediation options for businesses.

Specifically, with respect to education, many businesses today are struggling because they do not understand how to best protect and defend themselves against online reputation and brand attacks, and there is presently a lack of quality educational materials and resources for businesses to turn to help understand and address these problems. To address the absence of these resources, the Coalition is committed to providing resources to businesses with the most up-to-date information designed to explain, prevent, and help businesses ultimately eradicate the problem of online reputation and brand attacks.

The Coalition provides its members with whitepapers created by the experts who regularly handle online reputation and brand attacks around the world addressing common reputation and brand problems which businesses are facing today.

Our Non-Profit Provides Educational Resources to Help Businesses Protect Their Brands and Reputations Online

The Online Reputation & Brand Protection Coalition is a non-profit organization dedicated to helping businesses protect their reputations and brands online. The Coalition is led by internet brand protection experts Whitney Gibson and Chris Anderson and includes a variety of multi-national advisors comprised of experts, business representatives, attorneys, educators, and other professionals.

To learn more about the Coalition, visit www.onlineprotectioncoalition.org

ABOUT THE ONLINE REPUTATION & BRAND PROTECTION COALITIONBOARD OF DIRECTORS

Whitney C. GibsonCo-Founder, Co-Chair of Board of Directorswcgibson@vorys.com

Chris Anderson, PH.D.Co-Founder, Co-Chair of Board of Directorschris@cyberinvestigationservices.com

Melissa AgnesMember of Board of Directorswww.agnesday.com

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Stopping Others from UsingYour Trademarks to Divert Traffic to

Their Websites

If a business uses the same mark as you after you registered it, you will have priority for use and will likely be able to prevent the new party from using the mark.

Trademarks are powerful tools for almost every business. They help the public to identify your company and associate your products and services with your business. They can help your business stand out and assure the public that the products they buy come from you. But competitors and others can also try to use your trademark for their benefit. This whitepaper discusses some strategies you can use to prevent others from using your trademark and goodwill to divert traffic to their websites.

Step #1: Strengthen Your Trademark Protection

The first step in making sure your trademark is not being used to benefit other businesses is to strengthen the protection afforded your trademark and increase its presence online. By securing the rights provided by law, you give yourself more enforcement options to protect your trademark. The stronger your trademark presence, the more difficult it will be for others to use your trademark to divert traffic. This is because a strong trademark presence helps assure those searching for your trademark will be directed to content you control. Consider the following steps to strengthen your trademark protection.

A. Register trademark with the USPTO

While you can have trademark rights without registering the trademark, registration gives added protection. This is especially true with federal registration with the United States Patent and Trademark Office. The fees for obtaining and maintaining a federal registration are modest, though you may incur legal fees going through the registration process. Once registered, there are many benefits.

Registration lets the world know that your business is claiming trademark rights in the words, symbol, logo, or color at issue. Trademark law gives preference to the first user. Registration provides a record of your trademark. It will discourage others from choosing similar marks because registration places your mark on a publicly searchable database. If a business uses the same mark as you after you registered it, you will have priority for use and will likely be able to prevent the new party from using the mark. Once a business registers its mark, it prevents other from claiming that it adopted the same mark without knowledge. Further, after registration, you can use ® to indicate to competitors that the mark is registered. After five years, a trademark registration becomes “incontestable,” making it more difficult for others to challenge your use of the mark.

Registration also expands your rights nationwide. Once your trademark is registered, it is as if your trademark is used nationwide. Without registration, someone in another geographic area may be able to use the same mark because consumer confusion is not likely when the marks are used in remote locations. But by registering, your trademark is used nationally, so you may have the right to prevent use by a competitor even in remote geographic markets. This is especially helpful if your business expands into other locations as it grows.

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Stopping Others from UsingYour Trademarks to Divert Traffic to

Their Websites

If your Google presence is strong enough, your website should appear near the top (and, hopefully, first) on the Google results, so this may seem a bit redundant.

1 See the “Comprehensive Guide to Protecting & Defending Against Online Reputation Attacks” whitepaper for more on strengthening your presence in search results.

If you end up having to litigate with a competitor, registration gives you advantages. Registration provides additional damage awards in litigation, including the possibility of statutory damages, attorneys’ fees, and tripled damages for counterfeiting.

Finally, if someone is importing infringing or counterfeit goods in the United States, a federal trademark registration allows U.S. Customs and Border Protection to impound goods at the border.

B. Increase Your Trademark’s Presence Online

A strong brand presence online will make it more difficult for your competitors to use your trademark to divert traffic to their websites. Searches related to marks should yield results dominated by content you control. This will make it less likely that someone searching for your trademark will end up being directed to a competitors’ content.

Google’s search results are organized based on an algorithm that many have analyzed but one that outsiders do not fully understand; coupled with Google adjusting the algorithm every so often, this can limit the effectiveness of search engine optimization tactics. However, increasing the amount and diversity of brand content online still has an effect on search results.1 The keys now are to try to place content on websites that have a strong presence on the search engines and to diversify the placement of your content. If there is an often used website in your industry, then work to increase your brand’s presence on that website. Spread out your internet advertising on a variety of sources.

Moreover, a branded AdWords campaign is selective purchasing of advertising relating to your trademark and brand. It involves purchasing certain key words that will trigger an advertisement when a user searches for them. For example, if you purchase your trademark for Google AdWords, Google will display your advertisement when its users search for your mark. If your Google presence is strong enough, your website should appear near the top (and, hopefully, first) on the Google results, so this may seem a bit redundant. But this increases your brand presence on the search results, and with a little creativity, your brand will appear when users search for terms related to your business.

For example, many businesses purchase their competitors’ trademark in Google AdWords, so that an advertisement for their brand will appear when users search for their competitors. You can also purchase AdWords related to the generic name for your products or services, and other related words. The key is to think of what users looking for your product and service will search for, and to target those keywords accordingly.

An option beyond purchasing ads is to make use of popular internet sites. If you

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Stopping Others from UsingYour Trademarks to Divert Traffic to

Their Websites

A basic monitoring plan consists of running regular searches on the search engines for your trademark and examining the results.

have an advertising video or commercial, upload it to YouTube. Set up a Facebook page for your business and brand. Consider other websites that may be popular with respect to your industry, and look for opportunities to participate on those websites. Your company may also want to consider less traditional advertising. Various websites offer forms of sponsored content that fits in with the other content at the website. This is referred to as native advertising, which is advertising that matches the form and function of the website. In other words, it blends in with the website as opposed to being grafted on to the webpage as a separate item.

Step #2: Monitor Online Use of Your Trademark and Your Competitors’ Trademarks

Adopting a plan to monitor online use of your trademark will give you a better understanding of your brand’s online presence and alert you to potential problems as they arise. The sooner you know about an issue, the sooner you can act. A basic monitoring plan consists of running regular searches on the search engines for your trademark and examining the results. It is also good practice to regularly search for your business on the more popular complaint websites, such as Ripoff Report and Pissed Consumer. Go Fish Digital hosts a convenient, free service that will search over 40 complaint websites in one search (http://gofishdigital.com/complaint-search/).

There are numerous websites that will send you alerts based on new internet and social media content:

Platform What does it do?

Google Alerts Internet SearchCreates a customizable internet search on Google that sends you updates at set intervals

Topsy Multi-platformSearches Internet and social media sites in an organized fashion

Social Mention

Internet search focused on user generated content

Searches Internet and organizes mentions for particular search terms

Tweet Alarm TwitterProvides email alerts when someone tweets about your company or brand

Hyper Alerts FacebookProvides email alerts when someone posts on Facebook about a keyword

Pin Alerts PinterestProvides email alerts when a new pin is made regarding a keyword

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Stopping Others from UsingYour Trademarks to Divert Traffic to

Their Websites

Online brand marketing professionals can also help you analyze social media websites and other online platforms and decide which websites are appropriate.

In addition, Google AdWords is a useful service for trademark holders. A Google AdWords search will let you know who is using your trademark to attract Google searchers to their website. This search may also let you know whether competitors are using your trademark to divert traffic to their websites. Also, consider using Google AdWords Keyword Planner to search for your trademark. This service will give you an idea of how many people are searching for your trademark, and it will give you an idea of the results of the searches.

Step #3: Determine How to Act on the Information

Following the steps above will help increase your brand’s strength online. By increasing the use of your trademark on multiple platforms, you will help assure that potential customers searching for your trademark will be directed to content you control. The information gathering will also help you identify who is attempting to divert traffic and where they are diverting it to. The first two steps should inform you of the strengths and weaknesses of your brand’s online presence and let you know if anyone is trying to use your trademark for their own benefit.

Armed with this information, you need to decide what to do with it. It may be that you simply want to do more to increase your trademark’s presence online. If a competitor is using an AdWords campaign that includes your trademark, you may want to counteract that with an AdWords Campaign of your own. If one particular competitor is using your trademark in an unlawful or egregious manner, you may want to send a cease and desist letter or sue them. Choosing how to respond involves many factors and considerations that are specific to your trademark and industry. Rather than attempt to provide a general response plan, that may not apply to your specific situation, this section will discuss, generally, who can analyze your situation and help you.

A. Brand Marketing Professionals

If you conclude that you need a greater trademark presence online, a marketing professional will be able to help you. These professionals help develop a consistent brand online by making your websites, social media accounts and other identities have the same look and feel. This will ensure that your customers have a similar experience across all platforms when interacting with your company on the internet. This includes posting the same logo and tagline combination, using similar visual representations and writing in a consistent voice. Online brand marketing professionals can also help you analyze social media websites and other online platforms and decide which websites are appropriate. Once you have determined the best websites for your company, online brand marketing professionals can assist you in the development of your pages and profiles.

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Stopping Others from UsingYour Trademarks to Divert Traffic to

Their Websites

Tactics that move your company higher in search results one week may not have the same effectiveness the next week.

B. Search Engine Optimization (SEO) Specialists

If you believe your online content is sufficient, but is getting lost among other content, an SEO specialist may be able to help. An SEO specialist works with you to develop strategies that improve your search engine rankings and increase the amount of viewers looking at your website. They assist with this by helping companies develop good content that is linked and shared across multiple channels. The more shares and links to your content, the higher that it and your website will appear in search engine results. SEO specialists will also help you determine the most important keywords to use on your website and in your new content. Using the correct keywords will also help with your search engine results. Also, SEO improvements must be repeatedly cultivated. Tactics that move your company higher in search results one week may not have the same effectiveness the next week. Posting relevant, quality content is the best solution for advancing your company in search results.

C. Attorneys

If you believe someone is using your trademark unlawfully, then you should speak to an attorney. An attorney can help determine whether you have a claim, and help you determine whether legal action makes sense. Before filing a lawsuit, an attorney might suggest sending a cease and desist letter and trying to negotiate an acceptable resolution. Your attorney can help you decide what steps to take.

www.onlineprotectioncoalition.org