INTA Day 5: we’re going online.

Over the last five days of INTA’s 141^st Annual Meeting in Boston, we’ve been taking a look back through Boston’s rich history – sporting, commercial and academic – at some of the city’s most iconic brands, inventions and institutions, which have acted as a driving force for IP generation in Massachusetts and beyond.

On our final day we’re staying in Cambridge, site of the US’s oldest university, Harvard, and birthplace of one of the most well-known brands of the 21^st Century: FACEBOOK. Although Facebook now has its global headquarters in Palo Alto, California, most people will be familiar with the story of its genesis in the dorm rooms of Harvard, loosely dramatized in the controversial 2010 film, The Social Network. Although the site was originally created, in 2003, as a dedicated Harvard University network, by Mark Zuckerberg and a small band of fellow students, provision of the networking service was quickly expanded to Columbia, Stanford and Yale universities, before being rolled out more widely to colleges and high schools around the world.

Nowadays, it is hard to imagine a world without Facebook – out of approximately 7.7 billion people on Earth, Facebook is estimated to have amassed almost 2.4 billion monthly active users, nearly a third of the world’s population.

A large proportion of the Facebook’s value is no doubt directly attributable to the power of attraction of its name.  Less than 15 years after its foundation, Facebook was listed by Forbes as the world’s 4^th most valuable brand of 2018, with an estimated worth of US$ 94.8 billion – ranking above Amazon, Coca-Cola and the Walt Disney Company.

However, whilst Facebook is undoubtedly one of the world’s most successful online-networking sites, since the turn of the century there has been a proliferation of businesses in this field, from the now defunct Friends Reunited, to dating sites like Match.com, Plenty of Fish and Tinder. Sector-specific online networks have also sprung up, such as SERMO for the medical profession and, in the UK, Mumsnet, Mumbler and Mush, all vital sources of information and support on parenting.

But, what can fledgling online network businesses learn from Facebook’s rise to global success?

First and foremost, if you’re collaborating with others, have a formal written agreement in place, keep detailed notes from meetings and document each party’s involvement in, and contribution to the project. Facebook’s early years were somewhat marred by legal action brought by Harvard alumni, over the extent of their involvement in Facebook and who had conceived the idea of it.

Secondly, before launch, carry out trade mark clearance searches to check for earlier, conflicting marks posing a risk of infringement or passing off. It is not sufficient just to check that the relevant company and domain names of interest are available. It may not be possible for a new business to recover, if forced to cease trading – even temporarily – because an infringement claim rears its head, not to mention loss of credibility and reputational damage.

Notably, some of Facebook’s earliest EU trade mark rights predate the company itself – the earliest EUTM registration for FACEBOOK dates back to 2001, originally filed by cosmetic and personal care giant, Sephora, and acquired by Facebook in 2007. The registration covers publishing, advertising and telecommunications, and it is not difficult to imagine how Facebook’s activities could have been curtailed in the EU, had it not succeeded in acquiring the mark (or otherwise removing it from the register).

Once clearance searches have been completed, obtaining registered trade mark protection is also important – this is an area where the advice of a specialist trade mark practitioner can make a big difference to the scope and enforceability of any rights being obtained. All too often, unrepresented applicants can misclassify or define their products and services very narrowly.  Covering professional or social networking services might be obvious, but applicants can sometimes fail to secure protection in other key areas, such as advertising services – vital to their revenue generation.  Equally, obtaining protection for software (downloadable and SaaS) and the provision of a software platform (from which third party applications can be run for a price), may also be overlooked. The same applies to publishing, messaging , and provision of a marketplace.

Facebook has over 30 US trade mark registrations for marks containing the word FACEBOOK, as well as a host of pending US applications. It also applied to extend its protection of the FACEBOOK name in the EU last year, by filing an EUTM for FACEBOOK in all 45 international classes! Whilst applying to register a mark in every class is probably outside the budget of most new businesses (and indeed could jeopardise the validity of a registration in some jurisdictions, if there is no actual intention to use the mark for all goods and services covered), it makes sense actively to consider and protect areas in which the business will develop in the foreseeable future.  In turn, this can  build opportunities for brand owners with licensing and franchising, and create possibilities for further revenue streams.

Finally, don’t forget the T&Cs and Privacy Policy!  Given that one of the fundamental purposes of any networking site is to allow users to upload and share digital content (including copyright works), comprehensive terms and conditions of use need to be drafted, setting out what may be posted and how the content will be used; liability should be disclaimed in the event that uploaded content infringes the rights of third parties, or for loss of data or other content. A Privacy Policy may also be mandatory in some jurisdictions, setting out how personal data will be processed and used. The requirements for these documents may vary from jurisdiction to jurisdiction, so advice should be sought locally on their content, depending on the territories of operation.

Nevertheless, whilst online networking has its benefits, we hope everyone in Boston has enjoyed meeting contacts old and new in person this week! We look forward to seeing everyone again in Singapore next year.