My latest IP for Your Business column, published in the Southeast Texas Record, and its sister publications the West Virginia Record and the Madison (Illinois) Record, focused upon protecting your brand on Twitter and stopping Twitter squatters. With the Record’s permission I am reposting the article on the Blog. Click here and here to read the column at the Record. And if you are an executive or business owner that is reading this and thinking that you do not need to worry about Twitter, at least skim the article and then do a search for your company name on Twitter. You will likely change your mind. Here are five steps for leveraging and protecting your brand on Twitter:
More and more frequently, longtime clients call me with desperation and frustration in their voices.
In each case, we have a conversation that goes very much like this:
Client: Dave, I just learned that someone is using my company’s identity on Twitter [Twitter squatting]. They have thousands of followers and growing everyday. They have been tweeting for weeks [or even months], and we had no idea until someone told us.
Me: We can take care of this.
Client: But I already tried to contact them and they are anonymous.
Me: They are not as anonymous as you, or they, think they are. I have a plan to resolve this, protect your brand and we can even build your business in the process.
Client: Thank you. [Sigh of relief.]
Unfortunately, instead of my plan, too many lawyers and business owners throw up their hands, unsure how to proceed because Twitter issues have not been around long enough to be fully crystallized by law schools, case law or legal treatises.
And worst of all, many lawyers counsel their clients not to worry about Twitter because it does not matter and no one is paying attention to it.
In fact, Twitter has a massive user base – many estimates suggest 5 to 10 million users and growing quickly. Businesses that ignore Twitter are walking away from one of the most powerful marketing/referral systems in existence.
Here are five steps for protecting your brand on Twitter and stopping Twitter squatters:
1. Claim Your Names
Before you do anything else – in fact, today as soon as you finish reading this article – secure your names, trademarks and brands on Twitter.
Then strongly consider using one or all of the Twitter monikers to find and engage your customers. You can also use those accounts to warn people that a stolen Twitter moniker is not you or your company. This both locks in your Twitter identity and gives a place for your customers to communicate with and about you.
When your customers tweet praise or complaints using your Twitter name they are automatically added to a “Replies” list that you can access through your Twitter account. That allows you to know when anyone mentions you on Twitter, and to respond to them as appropriate.
2. Play Sherlock Holmes
Use the squatting account’s description and website links to identify the squatter’s address and identity.
If the account does not list a name, use a service like www.whois.com or www.godaddy.com to determine the registered owner of any listed websites. Often, the registrar will provide a real name, address, phone number or email.
If they do not, try using whatever information is provided to track down the individual’s other identifying and contact information using any of various internet background checking and identity services, such as www.intelius.com.
If that does not work, review the squatter’s tweets to see if they provide identifying information. The squatter will often disclose their geographic location by discussing favorite sports teams, regional news stories or favorite restaurants.
3. Get Your Name Back
If you think the squatting is unintentional, email, call or direct message (via Twitter) the squatter and ask them to drop the name. If they drop it, you can immediately register it as yours. This can be easily accomplished by having the squatter change its Twitter moniker.
Twitter will automatically change the squatter’s moniker with all of its followers and on all of the squatter’s past tweets. So there is minimal, if any, cost to the squatter and you can claim the name as soon as the squatter drops it.
In addition to changing the name, have the squatter tweet something like the following:
I have changed my name from @TRADEMARK to @squatter to avoid confusion with TRADEMARK.
If the squatting is intentional, asking does not work or if you just do not want to take the time to find out if it will work, send a strongly worded cease and desist letter backed with the threat of legal action.
The power of a stern letter from legal counsel threatening a lawsuit should not be underestimated. Just the letter will often get the Twitter moniker returned to you and the explanatory tweet sent.
Remember that just as you may be uncertain about the value and return on investment of Twitter, the squatter likely has similar questions and is not interested in an expensive legal battle.
4. Take Action
If asking and letters do not work, take action. If the squatter’s moniker is a clear and direct infringement of a registered trademark, the action can be as simple as sending abuse@twitter.com an email explaining the infringement and asking that the account be suspended.
The only downside is that Twitter suspends infringing monikers rather than transferring them and they only do it for very straightforward infringements, they do not make judgment calls.
If the infringement is direct or if you want the moniker back, file a lawsuit. Depending on your particular circumstances, you can file claims for trademark infringement, passing off or various tortious interferences. This is the most drastic option, but it will show the squatter you are serious, protect your brand and act as a deterrent to future squatters.
5. Use Your New Twitter Identity
This is the step that can generate new business, increased customer satisfaction and even cash flow. Begin following your customers, potential customers, ideal customers and competitors. And run regular searches either on Twitter (where you can save searches to rerun periodically) or at sites such as search.twitter.com for your trademarks, your products, important customers and your competitors.
Use those searches to build followers and to begin engaging your customers, potential customers and even competitors.
Your searches will allow you to identify when a customer praises or complains about your products and services and respond to them. You can explain or resolve complaints or amplify praise be retweeting it in.
These five steps may seem simple in hindsight, but they make up a powerful and important program that is critical for most modern businesses. Too many business people underestimate the power and importance of social media tools like Twitter.
Businesses need to monitor Twitter just like they do other trademark use and media channels. And you must enforce your marks on Twitter just like you do in every other channel of commerce.
R. David Donoghue is a partner in the Intellectual Property Group of Holland & Knight in Chicago, Ill. He may be contacted at (312) 578-6553 or david.donoghue@hklaw.com.

Continue Reading

Next Tuesday, September 29, at noon central, Adrian Dayton and I are giving an ALI-ABA audio seminar titled: IP Issues in Social Media. Dayton and I will discuss the growing importance of social media for businesses and look at strategies for protecting and promoting your brands with a focus on social media sites such as Twitter. Click here to register for the program. I hope to “see” you there.
Here is more detail about the program from ALI-ABA:
Why Attend?
This audio seminar takes a practical look at the wide world of electronic social media with a focus on protecting and leveraging intellectual property through the intelligent use of such media by both companies and their employees. What are people saying about your clients on-line? What is being said about your firm? How can you stop cybersquatters posing as your clients on Facebook, LinkedIn and Twitter? Listen to IP attorney-blogger David Donoghue and social media attorney/expert Adrian Dayton to learn how to leverage social media in a way that will not only protect your clients, but will help build their brands.
What You Will Learn
Social media is a critical element of the Internet and of every company’s marketing plan, whether or not the company affirmatively employs social media. Understand how electronic social media impacts a company’s intellectual property is important to every company–and to every practitioner, IP or otherwise. Taught by a duo of experts in the field, this one-hour audio-only program will cover:
The importance of protecting your social media identity;
A look at recent Twitter-squatting cases;
How you safely invite employees to use social media (including key components of social media policies);
How to create strategic social media policies without forfeiting the benefits;
Why banning employee use of social media can be dangerous; and
How to use social media in an effective way on just 15 minutes a day.
Invest just 60 minutes at your home or office to learn about current developments in electronic social media and the implications of intellectual property law (copyright, trademark and patent law) on new social media networks and the like. This teleseminar comes to you live on Tuesday, September 29th, 2009, 1:00-2:00 pm EDT, via your phone or your computer. Its format will allow for questions to be submitted to the panel via email during the program. Corresponding course material may be downloaded or viewed online, but they may not necessarily be followed during the presentation.

Continue Reading

Every litigator knows that email is discoverable, and that it can be dangerous because of a tendency to be less formal in email writing. And litigators are increasingly aware that instant messages are often archived and are likely discoverable, especially where they are used in the ordinary course of business. There is also an interesting question as to whether document retention policies should require that instant messages be archived and retained, but that is difficult issue for a separate post. But many litigators are unaware of the latest frontier in internet communications — Twitter posts, or tweets. Tweets are posts of no more than 140 characters that the user shares with, except in some limited cases, anyone who wishes to see them. And Lawyers USA has an interesting news brief (click here to read it) arguing that they are discoverable. So, the question for litigants and potential litigants is what to do about it. The answer to that question is very fact specific, but as a starting point you should be aware that tweets may be discoverable and corporations should make their employees, particularly those that tweet at the direction of the company, aware that their tweets may become part of future litigations.

Continue Reading

Blawg Review #189 is up at Colin Samuels’ Infamy or Praise Blog — click here to read it. As would be expected of a Blawg Review Sherpa, Samuels’ provided an epic Review, centered around The Rime of the Ancient Mariner. In addition to excellent writing focused around a strong theme, Samuels features some excellent IP content, including my post about the unequal application of Twombly pleading standards in patent cases:
Maya Richard suggested four tactics to preemptively protect patent assets from patent trolls: monitoring patent filings for applications related to your portfolio; hedging risk with patent infringement insurance; retaining skilled IP counsel to build a case for major patent assets; and joining an industry protection group. Also writing on a patent-related topic was R. David Donoghue, who noted that despite the Twombly decision, “many district courts are requiring that patent defendants plead affirmative defenses and, in some cases, counterclaims to the higher plausibility standard.” He suggests remedies for this uneven application of the Twombly standards.
And as an encore, after seeing Twitter driving traffic to his Review, Samuels posted a list of the Twitter accounts of the bloggers featured in Blawg Review #189 — click here to read it.

Continue Reading

Blawg Review #186 is up at Res Ipsa — click here to read it. Befitting a blog that focuses on the use of technology in the law, there is plenty of IP content:
* Traverse Legal has a great post, including a podcast, (click here to read/listen to it) explaining that while it is possible to register your marks without a lawyer, the smart decision is to use a lawyer that is an expert in the field.
* IP’s What’s Up makes the argument that open source licenses are a powerful use of a copyright — click here to read it.
* The mighty IPKat looks at the best IP advice provided by its readers in response to a recent contest — click here to read the advice and IP Kat’s thoughts.
Finally, it is not directly IP-related, but the Review also looks at an interesting technology debate that is occupying the legal blogosphere — the value of Twitter as a legal marketing tool. Calling himself a curmudgeon, David Giacalone at f/k/a argues against Twitter, or at least questions its business development value — click here to read the post, which has generated significant discussion and response. LexBlog’s Kevin O’Keefe responded strongly arguing Twitter’s value — click here to read it. O’Keefe’s arguments for Twitter boil down to the fact that Twitter is a powerful networking tool. It allows colleagues around the country and world with common backgrounds and issues to find each other and engage in far-reaching conversations. And building networks builds both professional satisfaction and business. I agree with O’Keefe whole-heartedly. But I also understand Giacalone’s uncertainty and lack of comfort with Twitter It takes most lawyers multiple tries to get Twitter and more than that to get comfortable using it. Hopefully, Giacalone will keep trying and figure it out eventually.

Continue Reading

Blawg Review #178 is up at Peter Black’s Freedom to Differ — click here to read it. Black also cross-posted each link in this week’s Review on Twitter. I admit that I have not grasped the full power of Twitter, but I am working on it. And I do grasp the power of Black’s Review. It is well done and contains lots of interesting links.

Continue Reading

Blawg Review #177 is up at Small Business Trends — click here to read it. Small Business Trends is a business blog and, so focuses its review on legal angles on business issues. The Review covers a number of intellectual property issues, including UsefulArt’s post about India’s first trademark on a sound. There is also considerable coverage of a hot legal blog topic, the use of Twitter by lawyers and businesses for marketing.

Continue Reading

Last Thursday, Ocean Tomo held its third live patent auction in Chicago.  According to the Chicago Sun-Times report, nearly 300 people attended the auction live (I understand others bid by telephone) and that 50 patents were offered for bidding, generating $11.4M.  The Sun-Times also reports that Telecommunications Corp. sold a video-on-demand patent portfolio for