Handling Trademark Infringement Claims on Facebook

By Josh Gerben, Esq.

Facebook Pages form the backbone of one of the most important social media strategies your business can pursue. Pages are Facebook’s name for dedicated business presences on their site – a place where you can provide company details, information, offers, and more, all in the interest of forming a greater connection with your customers and prospects.

With global reach and well over a billion users, however, it’s not surprising that there can be intense competition for certain Facebook Pages. Facebook doesn’t differentiate or segment by region, state, or even country – once a Page name is claimed, it’s no longer available, platform-wide. The flip side of the global reach and potential for connection that Facebook offers is the possibility of trademark conflict and infringement among multiple users who desire the same Page name.

As a business owner with a Facebook Page, you may even run into a situation where another party brings a claim of infringement against you, or, you need to claim that someone else is infringing on your trademark. Registering your trademark and knowing your rights as a trademark owner can provide assistance in such situations, and can dictate the ways in which you should respond – here’s why:

1. A registered trademark is your best tool when dealing with trademark infringement claims on Facebook.

Registering your business name with the United States Patent & Trademark Office as a trademark and/or service mark gives you a full complement of trademark rights and protections – offline and online. Should another party make a claim against your use of a mark in any way – including on a Facebook Page – your registered mark is will help you show Facebook that you are the presumed owner of the name in the United States.  Moreover, the registered trademark is almost a necessity if you are attempting to remove a Facebook Page that is infringing on your name. Because of the complexity of sorting out claims between parties, Facebook often sides with the owner of the federally registered trademark.

2. A registered trademark gives you a reasonable assurance that you’re not infringing on another mark through your Facebook Page.

The trademark registration process includes two steps that give you a strong claim against trademark infringement. First, your trademark application protocol should begin with an extensive trademark search. If you discover that your desired mark is already in use, you should seek registration for a different mark. Second, a mark that is confusingly similar to one already applied for or registered with the USPTO, is unlikely to be approved by your USPTO reviewing attorney. A successfully registered trademark is an indication that you’ve chosen a unique, distinctive mark that has been approved by the USPTO for use in commerce in your industry.  That being said, it is very important to remember that a federal trademark registration is not a shield of immunity from an infringement claim.  The registration provides the “presumption of validity” for your trademark but is not the final word on the subject.

3. A registered trademark bolsters your protection nationwide.

As mentioned above, a Facebook Page gives your business national and global reach: once your Page is up and running, you are (in most cases) engaged in interstate commerce. One benefit of a federal trademark registration is that it covers all interstate commerce – thus, even if another similarly named business across the country finds your Facebook Page and accuses you of infringement, your registered mark can help protect you against an infringement claim – regardless of whether or not you were previously aware of that company’s existence.  On the other hand, if you are a business based in New York but someone in California launches a similar Facebook Page, you can ask Facebook to remove the infringing content.

4.  A US trademark registration protects against overseas scams on Facebook.

We have seen instances where a company in India or China sets up a Facebook Page with the intent of coming up in search results when customers are looking for your company.  By having a US trademark registration, Facebook will (in most instances) help block that infringing page from showing up in the US.  That being said, in order to deal with such international infringement of a trademark you should consider filing trademarks in any countries in which you do business — especially hotbeds of intellectual property infringement (e.g. China).

 5. A registered trademark helps dictate how you should respond to a trademark infringement claim on Facebook.

In all cases of legal correspondence, it’s best to consult with an attorney to ensure that you don’t make any incorrect implications or otherwise false, legally questionable statements. A registered trademark certainly gives you leverage in responding to trademark infringement claims on Facebook – but you must remain judicious in your interactions with claimants. Not only can a trademark attorney assist you in successfully registering a trademark that can put you in a better position when dealing with trademark infringement issues, but the attorney can also help you handle those claims, if and when they arise.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.