Brand Protection & Content Protection
-Takedown Guides-
Facebook Trademark Protection
A Guide To The Facebook Trademark Takedown Webform
Facebook – the all-purpose social media platform which can be used for sharing all types of media. From photo albums to live streaming, Facebook has all media types covered and as such, is a vital for all rightsholders to monitor and understand the tools available for intellectual property protection on the platform. The focus of this guide is how-to submit a notification for trade mark infringement using the online webform – “Trademark Report Form”.
To report counterfeits, see:
A Guide To The Facebook Counterfeit Takedown Webform
-or for copyright infringement:
A Guide To The Facebook Copyright Takedown Webform
It is vital to note that the trade mark form is distinct from the webform for submitting a takedown request for a counterfeit item. Reporting a counterfeit item must go through the “Counterfeit Report Form” – although the two webforms follow the same structure.
Use the “Trademark Report Form” for all trade mark violations except counterfeiting i.e. a Facebook Page which includes a registered trade mark causing confusion to the source of the Page. Use the “Counterfeit Report Form” to report the sale of knock-offs with the trade mark of the rights owner attached i.e. a Facebook post selling knock-off Nike trainers. The counterfeit report can also be used if the post mentions the trade mark but the image deliberately hides the mark on the product image
The trade mark and counterfeit report webforms mirror the “Copyright Report Form”, including the confirmation declaration, which is peculiar given the copyright form is based on the DMCA notice and takedown process. The platform has been riddled with fake accounts and abusive accounts – and with the recent scandals Facebook has cracked down on accounts not complying with their own Terms of Services. IP protection is taken seriously by the platform, with reported infringements submitted via the webform typically processed within 48 hours. Click here to access the webform.
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The “Trademark Report Form” start page is to confirm the reporter does want to file a trade mark notification by selecting the “I found content which I Believe infringers my trademark”. Selecting any other option links the reporter to the relevant form i.e. form for submitting copyright infringement notification or to the help centre for support regarding the specified issue. Facebook has a large section dedicated to intellectual property rights focusing on trade marks and copyrights which can be found here. The link to the section is also displayed when selecting the copyright option at the start of the process.
After selecting the trade mark option the reporter is also presented with the choice to “Continue with my trademark report” or an option for reporting counterfeit items. Selecting the counterfeit items option directs the reporter to the relevant page. Once the reporter selects the continue report option, Facebook displays a message stating the serious nature of submitting a trade mark takedown request including the potential for account termination or even liability for damages caused if the report is made fraudulently or without due care.
Four sections are displayed:
- Contact Information
- Trademark Information
- Content that you want to report
- Declaration
Clicking the radio button under each heading expands the section, each must be completed to submit the trade mark notification.
Contact Information
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To submit a notification, the reporter must either select “Me or my organisation” or “My client” as noted in the requirements. Selecting the “Someone else” option brings a message to explain with a third party cannot report trade mark infringement via this form. If reporting as the rightsholder, the form will request the reporter’s name and “job responsibility” – which from the dropdown the reporter can choose “Owner”, “Legal Advisor” or two ‘other’ options. If reporting on behalf of a client the form will request the reporter’s name, organisation name and “Your relationship to the rights owner”. After selecting the appropriate option in the dropdown menu under relationship, all the other contact information needs to be completed. The postal address can be for the organisation reporting if on behalf of a client. The box requesting “Name of the rights owner” can either be a person’s name of organisation’s name. The last box in this section requests “Please provide a link to the rights owner’s official online presence.” – in the form of a URL. The reporter can include a social media page of the trade mark owner or the ecommerce store.
Trademark Information
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This section requires the trade mark registration information to be provided, including name, country of registration, registration number, category of goods and/or services covered, a URL to the registration and to attach copies of the registration documents. It is advised to provide the link to the registration and attach a copy of the registration document as it assists the review process. Failure to provide can delay the processing of the notification. The final option in this section is a tick box if the reporter has additional trade marks which are relevant to the report. Up to five additional trade mark registrations can be added to the notice. It is advised to report infringements of the same mark together in a single report to avoid potential confusion and delay in processing of the notification. However, in some circumstances, such as when the trade marks infringed are figurative, it may be beneficial to include more than one trade mark.
Content that you want to report
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The options provided are vital to trade mark reports. Multiple options can be ticked in combination in a single report, however, misidentifying the content can delay the review of the notice or lead to Facebook requesting further information be provided. The first option is to report infringing “Photo, video or post”, this covers infringement within a post which leads to removal of the identified infringing posts. The second option is to report “An entire Page, group or profile”, this could be a misleading Page using the trade mark to cause confusion with the trade mark owner. This option typically leads to the termination of the Page if the Page owner refuses to change the Page name. The third option “Photo album” is an extremely uncommon option for such reports. The fourth option “Username” is vital to misleading usernames causing confusion on the platform – trade mark infringement within usernames is common. The trade mark owner is given the option to claim the username. If this is selected, the reported username is transferred to the trade mark owner. The final option is “Other”.
The large box “Please provide links (URLS)…” enables bulk submission of infringing URLs. It is advised to only submit URLs infringing the same trade mark together in a notice to avoid confusion and potential delay in the processing of the notice. This part of the webform is where most errors occur as users struggle to find the correct URL to submit. Generally, when navigating Facebook, clicking the date as shown under the account name opens the URL in the correct format to submit. Facebook uses a variety of URL formats so do not attempt to try getting all the URLs into a single format, as mentioned, clicking on the date will typically provide a URL that can be processed. On mobile devices however, Facebook advises to click “Share” then “Copy Link” if the date is not displayed.
The final option in this section requests the reporter to “Please describe how you believe this content infringes your trademark rights.”. It is advised to provide a detailed description of the infringement, including comparisons of the registered trade mark and the mark being reported, noting if identical. The reporter is also advised to state how the use of the trade mark is an infringement as not all uses constitute trade mark infringement – causing confusion with the original trade mark is typically cited in this section of the webform.
Declaration
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The final section has two radio buttons, however agreeing to the declaration has legal consequences which are displayed beneath the option. Submitting the takedown request is a serious legal process. it is advised to carefully read the statements agreed to by clicking the option, which are – the reporter has good faith belief the use of the trade mark is not authorised, that the notice is accurate and under the penalty of perjury the reporter is authorised to submit the notice. Select “Yes” and then the reporter must enter their full name as electronic signature. This must match the above box “Your name (name and surname)” exactly to submit the notice. To finish, click “Submit” and the trade mark takedown notice is sent for the infringing content to be removed, pending review.