Avoiding online trademark infringement and counterfeiting starts with awareness

Trademarks act to identify the source of a particular good or service. To be effective and drive sales, they generally need to be visible to a certain segment of consumers. On the Internet, such “visibility” can be achieved through various search engine optimization and marketing techniques. Discussed below are several ways unscrupulous infringers trade in the trademarks, trade names, and goodwill of trademark owners.

1. Domain names – Certain use of trademarks or confusing similar variations as domain names may constitute trademark infringement. In addition to the remedies available against cybersquatters under the Consumer Protection Against Cybersquatting Act (ACPA), 15 USC Section 1125(d), a trademark owner may file a lawsuit in state or federal court. Tracking domain name registrations is an effective initial step in warning of infringements. Trademarks, trademarks plus extra verbiage, and obvious typographical errors (known as “typosquatting”) should be considered in a monitoring program.

2. Meta tags and source code – Sophisticated infringers will insert trademarks into a website’s source code to lure consumers to the site when they enter search engine queries for the trademarks. These tactics include meta tags, title tags (located at the top of the page and usually displayed at the top of the browser window), and header tags (code associated with key text on the website page). Portions of the source code can be viewed by selecting “Show Source Code” or similar options depending on how the browser is used. Along with website copy, the use of trademarks in the source code is probably one of the reasons why a web page shows up high in organic search engine results.

3. Website Copy – Actual text on websites is one of the most obvious ways to infringe a trademark and works well for search engine optimization. This type of infringing use of the trademark can usually be found by searching the page(s) of the website.

4. Keyword advertising – Trademark infringement in keyword advertising, also known as “pay-per-click” advertising, is one of the most insidious because of the effect it has on some trademark owners. In keyword advertising, someone bids on a particular keyword or phrase entered by the public into a search engine. Winning bidders usually appear as ads or results in a “paid sponsors” area of ​​the search engine results page, usually at the top or right side of the page. Trademark infringement in keyword advertising occurs in two possible ways. First, the banner ad may contain infringing use of the trademark and typically includes a link to a website. This can divert people looking for a trademarked product or service to a third party website. Second, the trademark may be used in the keyword bid itself, which can also divert business from the legitimate trademark owner. The latter is particularly egregious because the price of keyword advertising is usually based on an auction format and increases as the number of bidders for the term increases. Thus, third-party infringers may increase the cost for the trademark owner to bid for their own trademarks in keyword advertising.

5. Social networks – In addition to the obvious problem of infringers acquiring the usernames of trademarks or trademarks (also known as “username squatting”), trademarks can be infringed in a number of ways on social media. These include publications, domain name links, and background information. Businesses should regularly monitor their trademarks on social media to prevent future infringements and stop innocent infringements as soon as possible.

6. Internet directories – Due to the many Internet directories out there, unscrupulous trademark infringers can list your website or company (with a link to your website) in these directories and misdirect consumers’ searches for a trademark . This type of trademark infringement can be particularly difficult to remedy due to the large number of directories, the relative lack of self-policing, and the international distribution of carriers. Generally, an agreement with a trademark infringer should include a requirement that a de-identification request be made to any Internet directory containing infringing references or content.

7. Blog Posts, Article Sites, and Other Comments – Blogs, article submission sites and other sites that allow comments are an excellent opportunity to build inbound links and thus increase a website’s search engine optimization. Unfortunately for trademark owners, these sites provide an equally excellent opportunity to entertain business using the trade name or trademark of others.

8. Search Engine Directories – Like Internet directories, search engines provide listings, such as Google Local (now Google+), where businesses can be listed along with their address, basic business information, description of services/goods offered, and site address Web. These listings are ripe for one business to claim the identity of another. Trademark infringement can also occur in the description of the business or the services/goods offered. Most search engines provide a process to “claim” a listing or transfer it to the rightful owner. Businesses should be proactive in this area by reclaiming their listings before they are taken over by third-party infringers.

9. Website hijacking – One of the scariest new developments in brand counterfeiting is website hijacking. This new form of infringement is likely a response by infringers to the success brand owners have had in cracking down on online trademark counterfeiting. Website hijacking is when an infringer hacks into a website, usually a corporate one and sometimes one owned by a well-known company, sets up a subdomain, and operates a counterfeit online store selling infringing products. The business is often unaware of this, only finding out after the brand owner files a lawsuit to stop the infringing online store unknowingly operated by an innocent outside company. This technique is particularly devious, as it gives the counterfeiter cover and time for the judicial system to move their operation before the trademark owner can obtain a court order.

Despite the danger the Internet poses to brands and brand owners, there are many effective strategies to stop infringement. Monitoring trademark usage is an effective first step. Contacting an intellectual property attorney and submitting cease and desist letters are additional steps that may be effective before filing a trademark infringement lawsuit.

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