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Ongoing Username Squatting and Trademark Infringement

Written By: Melody Abazari

Username squatting, which is when a person attempts to impersonate a celebrity or company through choosing a celebrity or company’s name as their own username, has become a big issue in social media. Those who have registered using a celebrity/company name tend to have done so “with the bad faith intention of benefiting from the goodwill of that established name or trademark.”[1] A trademark is a “word, name, symbol, or device” that identifies a particular source of goods or services and distinguishes them from other goods and services.[2] In order to prove trademark infringement, the plaintiff must show that it has a valid trademark, and that the defendant, without consent, used the mark in commerce in connection with “goods or services” in a manner “likely to cause confusion … or to deceive” people.[3]

 

A trademark owner has three possible options on how to approach these situations against an alleged infringer on social media: (1) report the infringement directly to the social media website, (2) send a cease-and-desist letter to the infringing party, or (3) initiate a lawsuit.[4] All of these options have pros and cons.

 

In Oneok, Inc. v. Twitter, Oneok, a Fortune 500 company, brought a claim against Twitter for direct and contributory trademark infringement.[5] Trademark infringement is the “unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.”[6] Direct infringement occurs when a person without authorization uses a registered mark on or in connection with the sale, offering for sale, distribution or advertising of goods or services that is likely to cause confusion, or to cause mistake, or to deceive.[7] An example of contributory infringement is if company “intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributer is contributorially responsible for any harm done as a result of the deceit.”[8] A third-party registered the “Oneok” Twitter handle and used the account to post Tweets about Oneok.[9] Oneok claimed that the “Oneok Twitter account holder has on at least two occasions created Tweets containing information regarding Oneok, Inc.,” that these “communications contained the Oneok trademark name and Diamond design,” and that these “Tweets have the appearance of being an official statement issued by Oneok on the Twitter system.”[10] They also claimed that Twitter did not provide Oneok with the contact information of the infringed account holder, and that Twitter declined to assign the Oneok Twitter account to Oneok, Inc.[11] Within a day after the complaint was filed, Twitter suspended the fake account, and Oneok withdrew the lawsuit.[12] It appears that Twitter most likely only acted once they realized that Oneok, Inc. pursued a lawsuit over this matter showing that this may be an ongoing issue with other entities as well.

Twitter began allowing celebrities and/or businesses to validate their account by having Twitter verify the legitimacy of the user behind the account; Twitter adds a blue check mark badge on the account’s profile when the user has been verified through Twitter’s system.[13] Although this verification process was able to restrict some username squatting, it has not been a complete solution to the problem because there are still attempted impersonations that can cause confusion even if those accounts are not verified.[14] Since this is still a growing issue that many people and entities have been encountering, a better solution to this problem needs to be created. It would be a good idea if there were rights that applied to all social media accounts, no matter the website, that protected users from username squatting. This would likely require Congress to enact a federal law surrounding this issue. Since our world is now centered around social media, it would not be a bad idea to have a new law enacted regarding the issue of username squatting.

[1] Daniel Doft, Facebook, Twitter, and the Wild West of IP Enforcement on Social Media: Weighing the Merits of a Uniform Dispute Resolution Policy,, 49 J. Marshall L. Rev. 959, 968 (2016).

[2] Id. at 963.

[3] Id. at 964.

[4] Id. at 960.

[5] Id. at 970.

[6] United States Patent and Trademark Office, About Trademark Infringement, https://www.uspto.gov/page/about-trademark-infringement.

[7] 15 U.S.C.S. § 1114

[8] Inwood Labs. v. Ives Labs., 456 U.S. 844, 854 (1982).

[9] Doft, supra note 1, at 970.

[10] Id.

[11] Id.

[12] Id.

[13] Id.

[14] Id. at 971.

 

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