Defending a Brand on the Internet: A Strategic Enforcement Playbook

50 questions on defending a brand on the internet, answered and cited by the UpLaw editorial team.

• Can a marketplace be liable for its sellers' counterfeits?
• Can a registrar or registry be held liable for a customer's cybersquatting?
• Can counterfeiting be prosecuted criminally, and how does a brand owner help?
• Can genuine goods become counterfeit?
• Can I force a website to take down a negative review or a gripe site?
• Can I stop a competitor from buying my trademark as a search keyword?
• Does delay in enforcing a trademark online hurt the owner?
• Does Section 230 protect platforms from trademark claims?
• Do I have to register my trademark to protect my brand online?
• Has contributory trademark liability been applied to physical marketplaces?
• How do courts determine bad faith under the ACPA?
• How does customs recordation help stop counterfeits?
• How does the Lanham Act define a counterfeit?
• How do you deal with social media accounts impersonating your brand?
• How do you pursue a cybersquatter who is anonymous or offshore?
• How should a brand measure its online enforcement program?
• How should a brand owner build a gray-market enforcement case?
• How should a brand triage online enforcement targets?
• How should courts analyze confusion in keyword advertising cases?
• How would a brand respond to several different online threats surfacing in the same week?
• Is buying a competitor's trademark as a search keyword a “use in commerce”?
• Should I use the UDRP or sue under the ACPA to recover a domain?
• What are gray-market goods?
• What are the elements of an ACPA cybersquatting claim?
• What are the limits of marketplace brand-protection programs?
• What are the limits of the UDRP?
• What are the risks of aggressively pursuing online critics?
• What are the risks of sending a DMCA takedown notice?
• What bodies of law does online brand protection actually draw on?
• What brand assets besides the company name can be protected online?
• What channels should a brand monitor for online infringement?
• What damages are available against a counterfeiter?
• What damages can a brand owner recover for cybersquatting?
• What does Amazon Brand Registry provide?
• What is a Schedule A lawsuit?
• What is cybersquatting?
• What is initial-interest confusion?
• What is nominative fair use in online brand disputes?
• What is the escalation ladder for online brand enforcement?
• What is the fastest way to remove a counterfeit listing?
• What is the first-sale doctrine in trademark law?
• What is the Lever rule and how does it stop gray-market imports?
• What is the material-differences exception to the first-sale doctrine?
• What is the quality-control exception to the first-sale doctrine?
• What is the UDRP and what must a complainant prove?
• What kinds of cybersquatting conduct have courts punished under the ACPA?
• What preventive steps should a brand take before infringement appears?
• Which sections of the Lanham Act carry online enforcement claims?
• Why is a DMCA takedown sometimes better than a trademark complaint?
• Why is defending a trademark online different from traditional trademark enforcement?