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Columns & DepartmentsThe Intellectual Property StrategistIntellectual PropertySocial MediaTrademarks

IP News

By Howard Sire and Di'Vennci K. Lucas
October 01, 2024

'Polaroid' and Online Self-Promotion: A Cautionary Tale

In a recent decision by Judge J. Paul Oetken of the U.S. District Court Southern District of New York, the issue of trademark infringement collides with the dynamics of social media and online presence. Particularly, the court addresses the extent to which social media profile "bios" could confuse or mislead consumers. Can online community customs be construed to support a claim of trademark infringement under the Lanham Act?

The Lanham Act safeguards potential consumers from marketplace confusion, allowing for the appropriate sourcing of goods and/or services in creation of goodwill for brands and trademarks. Trademark law is primarily focused on source identification for the benefit of consumers. Thus, trademark infringement is the violation of goodwill and consumer trust by eliciting confusion within the marketplace.

For over half a century, courts within the Second Circuit have relied on the eight-factor balancing test established in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d. Cir. 1961), to measure potential customer confusion. These non-exhaustive Polaroid factors are the vehicle of Judge Oetken's opinion in Portkey Techs. PTE Ltd. v. Venkateswaran, No. 23-CI-5074 (JPO), 2024 WL 3387735 (S.D.N.Y. July 19, 2024).

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