Silly Bandz Suits Show Marketers Need to Protect Against Misuse

As Social Media Erodes Trademark Protection, Some Companies Really May Not Own Their Brands

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BATAVIA, Ohio ( -- Marketers no longer own their brands in the age of social, or so the saying often goes. That could become true for some brands in a legal sense, thanks to the casual way people treat brand names in social media -- an issue highlighted by recent efforts from the marketer of Silly Bandz to preserve its trademark.

The Silly Bandz website.
The Silly Bandz website.
BCP Imports, which makes the wildly popular kiddie bracelets, has filed suit in the U.S. District Court for the Northern District of Ohio against four competitors or retailers, including Walmart Stores, in recent weeks to protect its trademark or trade dress. But widespread use -- and misuse -- of the brand name in social media could work against Silly Bandz in court, according to some intellectual-property attorneys.

Social-media use and misuse of the brand isn't a factor in the most prominent case against Walmart, where BCP alleges the retailer is selling products that infringe on Silly Bandz trade dress or product concepts rather than brand names. A Walmart spokesman said, "The wrist bands we sell are supplied by several companies, and we are looking into this further."

But in other cases against operators of websites or competitors with close-sounding brand names, BCP is charging infringement of the word mark. That's where social media comes in.

Becoming a generic term
When people use a trademark as a generic term, it can be evidence the name has lost the distinctiveness that warrants trademark protection. A Google search shows "Silly Bandz" used about 20% of the time as "silly bands" rather than by the proper trademarked name.

"There's no question that if I'm an attorney on the wrong end of an infringement suit, I'm going to be doing a heck of a lot of searching to bring into evidence every single example I can find of a person using the mark as a non-proprietary term," said Julia Matheson, an intellectual property lawyer with the law firm Finnegan in Washington. "If the only communication you have with the public is through viral marketing and you are not doing anything to correct the misperception, the risk is much higher."

BCP's attorney, Richard MacMillan, of the Toledo firm MacMillan Sobanski & Todd, said that while he recognizes social-media misuse poses risks to trademarks, he believes the company has very strong cases and will prevail.

"A lot of people are using the term 'Silly Bandz' wrongfully as part of their trademark, and that's just simple infringement," he said.

He expects defendants to argue misuse of the term in social media is evidence the trademark has lost its distinctiveness. But he said the fact that the U.S. Trademark Office registered the trademark only this year, and after substantial review, strongly argues against that.

Old rules no longer apply
Vigorous trademark defenders such as Kimberly-Clark Corp., which once focused mainly on ads in journalism trade publications to protect the Kleenex trademark from those who would use it as a generic description of facial tissues, have more recently focused on social media. Last year K-C launched an online display ad campaign to discourage improper use of the Kleenex name.

Such efforts can shore up trademark protection, Ms. Matheson said, but it's not practical to send cease- and-desist letters to everyone who uses a brand name improperly on Twitter.

"It's very hard to educate the public and not offend people," she said. "The way people dash off correspondence online, all the old rules of careful use of a mark really don't apply anymore. You're dealing with the public using your mark however they're going to use your mark."

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