advanced trademark : tools & strategies

Generally Excludes

• Trademark Searching Sites – See Bonus Material at the End

• Trademark Counterfeiting • Trademark Litigation

• West Topical Highlights - Trademarks• All TM News• Industry TM News• IP News• Legal Newspapers - TM• BNA PTC Law Daily - TM• BNA PTC Journal - TM• BNA World IP Report - TM• UK Current Awareness – TM

Don’t forget WestClip

Don’t forget WestClip

• Primary Sources• Secondary sources• Court Records & Litigation Tracking• Expert Testimony• Courtroom Transcripts• Jury Verdicts• Uniform Domain Name Dispute Resolution

Policy Arbitration Decisions (UDRP-ARB)• Fleet Street Reports (FLEET-RPTS)• European Trade Mark Reports (ETR-RPTS)• Bill Tracking – Federal• International/Worldwide Materials

• Primary Sources• Secondary sources• Court Records & Litigation Tracking• Expert Testimony• Courtroom Transcripts• Jury Verdicts• Bill Tracking • International/Worldwide Materials

Don’t forget LexisAlerts Don’t forget LexisAlerts

Use WTR WebsiteUse WTR Website

Don’t forget social media

and alerts

Don’t forget social media

and alerts

Free News

Trademark News Tracking ServiceTrademark News Tracking Service

The idea of blogs is to let readers decide what blog content is of value and to consume that content for free on a newsreader – whether the content be individual blogs or keywords/key phrases in blog posts. Picking out 2% of law blogs and saying here, this blog is good enough to read is like throwing up fish to fishermen on the side of a stream who are fishing for a different type of fish.

Social Media : Crowdsourcing

Top 10 Legal Podcasts

• Lawyer2Lawyer • Legal Toolkit • Bloomberg Law

Podcasts• CLE Premier Speaker

series• TED Talks – Law

• Legal Geekery • LexisNexis Legal Podcasts • Law School Podcaster• RocketLaywer Podcasts • This Week in Law• Lawline

Academic Alerts

Scholarship that is nowhere else found…

Scholarship that is nowhere else found…

Power Point Slides

Law Schools

• Abandonment• Acquired Secondary Meaning• Collective Marks and Certification Marks• Distinctiveness• European Union Trademark Basics• Federal Trademark Registration: Bars to

Registration• Foreign Words and Personal Names as

Trademarks• The Role of 'Use' in Trademark Law: An

Overview

• Functionality• Incontestability• Initial Trademark Ownership• Injunctive Relief for Trademark

Infringement• Introduction to Trade Dress Law• Lanham Act Section 43(d):

Cybersquatting• Likelihood of Confusion• Recovery of Damages for Trademark

Infringement• Registration and Section 44• Related Goods• Service Marks• Statutory Interpretation• The Geographic Scope of Trademark

Protection

• Don’t forget the oldies but goodies– Encyclopedias– Treatises– ALR– Periodicals– Practice Materials

Treatises in the UNH Law IP Library• Scholarly to Practice• All aspects– Prosecution– Litigation– Transactional – Business aspects – Policy aspects

Treatises• IP Library• MELcat• Major Publishers– Lexis– West– PLI– Aspen– Oxford– Elgar

• Online– Lexis– Westlaw– Making of Modern Law– ECHO

• Secondary Sources• Footnotes• Shepards & KeyCite• MELcat

Periodicals• Lexis• Westlaw• Legal Resource Index• HeinOnline• Legal Scholarship Network• Open Web (e.g. Findlaw)• Google Scholar• Print in IP Library with added website

Dedicated Trademark Periodicals

Primary Sources of Law

• Cases• Statutes• Treaties & Other International

Agreements• Regulations• Procedural Manuals

Cases• Premium Tools

• Lexis, Westlaw, BloombergLAW, BNA IP Library• Trademark Topical Areas• Finding Tools – West and BNA

TM Topics and Key Numbers• Secondary Sources

• Open Web Tools• Academic, e.g. LII• Government, e.g. USPTO

Statutes• Premium Tools

• Lexis, Westlaw, BloombergLAW, BNA IP Library• Trademark Topical Areas• Finding Tools – West and BNA TM Topics and Key

Numbers• Secondary Sources

• Open Web Tools• Academic, e.g. LII• Government, e.g. USPTO

Foreign Laws• Lexis– Country Libraries– Global IP Law Service

• Westlaw – Country Topical Area

• Deep Web (e.g. INTA)• Open Web– WIPO– Library of Congress (GLIN)

Treatises that contain and explain foreign laws

Treaties & Other International Agreements• International Treaties - Trademarks

• Treaties governing general standards of protection to be provided by States– Paris Convention for the Protection of Industrial Property. The first major

international agreement covering patents, designs and marks. [Article 6ter of this Convention covers State Emblems, Names, Abbreviations and Emblems of International Intergovernmental Organizations]

– Trademark Law Treaty– Singapore Treaty on the Law of Trademarks– Nairobi Treaty on the Protection of the Olympic Symbol

• Treaties governing registration systems for obtaining protection

– Madrid Agreement Concerning the International Registration of Marks– Protocol Relating to the Madrid Agreement Concerning the International

Registration of Marks

• Treaties governing international classification systems– Nice Agreement Concerning the International Classification of Goods and

Services for the Purposes of the Registration of Marks– Vienna Agreement Establishing an International Classification of the

Figurative Elements of Marks

TRIPS • The "Agreement on Trade-Related Aspects of Intellectual Property Rights" (TRIPS)

introduced intellectual property rules into the multilateral trading system for country members of the World Trade Organization (WTO). TRIPS came into force on January 1, 1995. Regarding trademarks, the Agreement:

• Defines what types of signs are eligible for protection• Provides for the protection of service marks• Establishes the minimum rights of trademark owners• Confers additional protection for marks that are well known in a particular country• Defines the standards concerning the availability, scope, and use of intellectual

property rights, including copyright and related rights, trademarks, geographical indications, industrial designs, patents, layout designs of integrated circuits, protection of undisclosed information and control of anti-competitive practices in contractual licenses

• Specifies enforcement procedures• TRIPS provides for different transitional periods for the application of the provisions

of the Agreement, depending on the level of development of the country in question. For developed countries, the transitional period is one year from the date of entry into force of the Agreement, for developing countries and any country undergoing structural reform in its intellectual property system the transitional period is five years, and for the least developed countries the transitional period is 11 years.

Regional agreements established by African nations

– The “African Regional Intellectual Property Organization” (ARIPO) was formed in 1976 by certain English-speaking African nations that entered into the Lusaka Agreement to enable one regional filing for ARIPO members. It is possible to file an ARIPO application claiming priority based on the Paris Convention. An application can be filed with ARIPO in Harare, Zimbabwe or at a national intellectual property office.

– The Organization Africaine de la Proprieté Intélectuelle, or African Intellectual Property Organization, (OAPI) has its antecedents in the Libreville Agreement of 1962, by means of which certain French-speaking African nations established a regional office for filing trademark applications. OAPI was formed in 1977 by the Convention of Bangui. According to the Convention, an application may be filed in the Central Office in Yaounde, Cameroon and covers the 16 OAPI countries.

Regional agreements established by American nations

• Andean Pact – This agreement was formed by certain South American countries to form a customs union between the member states,

now known as the Andean Community. The Andean Pact contain trade regulations that are binding to its members. With respect to intellectual property, it establishes one common Trademark Law, Decision 486 of the Commission of the Andean Community, in force as from December 1, 2000. The four member states of the Andean Pact are Bolivia, Colombia, Ecuador and Peru.

• Mercosur – Together with the Andean Pact, Mercosur is the other major trade block in South America. In particular, the scope and

principles of protection of trademarks, indications of source and denominations of origin within this union are concluded in the Protocol of Harmonization of Rules Regarding Intellectual Property within Mercosur, created by the Asuncion Treaty in 1991. Areas covered by this Agreement include trademarks, indications of source and denominations of origin. The four member states of Mercosur are Argentina, Brazil, Uruguay and Paraguay.

• NAFTA – The “North American Free Trade Agreement” (NAFTA) was formed in 1992 by the United States, Canada and Mexico.

NAFTA provides basic standards for the protection of trademarks and other intellectual property rights by each member party.

• General Inter-American Convention for Trademark and Commercial Protection – The General Inter-American Convention for Trademark and Commercial Protection (previously called the "Pan-American

Convention") was adopted in Washington, D.C. on February 20, 1929. The member states are: Colombia, Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay, Peru and the United States. Most notably, the Convention defines standard procedures among the members for registration, opposition, cancellation and trademark abandonment.

• CAFTA-DR – The Dominican Republic – Central America Free Trade Agreement (“CAFTA-DR”) was signed in 2004 by the United States,

Costa Rica, El Salvador, Guatemala, Honduras, Nicaragua and the Dominican Republic. CAFTA-DR contains robust provisions for the protection of trademarks and other intellectual property rights among the member states. In particular, CAFTA-DR implements the likelihood of confusion test and makes it mandatory for all member states to allow for the registration of collective marks, certification marks, and sound marks.

Agreements concluded by European countries

• The Community Trade Mark – The European Community Trade Mark system (CTM) was established in 1996 and initially

covered 15 nations of the European Union: Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, the Netherlands, Portugal, Spain, Sweden and the United Kingdom. The CTM has been extended to the following countries, which subsequently joined the European Union: Bulgaria, Cyprus, the Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Romania, the Slovak Republic and Slovenia.

– Prior to the CTM registration system, it was necessary for an applicant to file a trademark application in each individual country of the European Union and to file one application covering the Benelux countries to obtain protection across the EU. It is now possible to obtain a single trademark registration covering the whole of the European Union with a single application. The result is the establishment of a self-contained legal system for trademarks within the EU and greater simplicity and lower costs for applicants.

• Benelux – Benelux is a union of Belgium, the Netherlands and Luxembourg formed by these states in

1971 for trademark filings.

Additional agreements affecting trademark-related intellectual property rights

• Hague Agreement Concerning the International Deposit of Industrial Designs (1925)

• Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (1958)

• Locarno Agreement Establishing an International Classification for Industrial Designs (1968)

• Nairobi Treaty on the Protection of the Olympic Symbol (1981)

Treaties• Westlaw Intellectual Property Treaties (IP-TREATIES)

– multibase which contains intellectual property treaties, conventions, agreements and other international materials from a number of separate and disparate databases. A document is the text of an international document, including an introductory note and/or content summary, if available. Coverage varies by source.

– See also Westlaw Combined Treaties (CMB-TREATIES), GATT and NAFTA

• Lexis FILE-NAME: TREATY – Selected IP Documents from Volume 1 Basic Documents of the International Economic Law.

• Thomas Treaties• WIPO• USPTO• INTA• AIPLA

Regulations

Administrative Decisions

• Lexis• Westlaw• Open Web (e.g. USPTO)• Print (e.g. U.S.P.Q.)• BloombergBNA IP Center

Procedural Manuals

• TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)

• Trademark Examination Guides• Trademark Trial and Appeal

Board Manual of Procedure (TBMP)

Legislative History• Print• Microfiche• Lexis• Westlaw

– General Accounting Office Collection• HeinOnline

– IP Library• Proquest Congressional• Open Web• Commercial Publishers• Outsourcing• Law review articles

Royalty Rates

• Research and Markets: Royalty Rates for Trademarks & Copyrights (IPRA)

• SEC Filings?

Bonus Materials

How TM Lawyer uses the Open Web

Trademark Trademark SearchingSearching

Using the Free Using the Free WebWebJennifer L. Morris, Esq.Jennifer L. Morris, Esq.

Grossman, Tucker, Perreault & Pfleger, Grossman, Tucker, Perreault & Pfleger, PLLC PLLC

Manchester, NH Manchester, NH

What type of information What type of information might you need to search might you need to search

for? for? Trademark availability Trademark availability Trademark distinctivenessTrademark distinctiveness

Primarily merely a surnamePrimarily merely a surname Merely descriptiveMerely descriptive Geographically descriptiveGeographically descriptive Foreign translationForeign translation

Trademark PolicingTrademark Policing Domain Name availability Domain Name availability CybersquattingCybersquatting

Trademark AvailabilityTrademark Availability

Many search engines available to get Many search engines available to get an understanding of the risks in an understanding of the risks in adopting a new mark. adopting a new mark.

Knock out searches are useful to Knock out searches are useful to determine if there is a determine if there is a ““direct hitdirect hit”” with a prior registered mark. They with a prior registered mark. They are not comprehensive enough to be are not comprehensive enough to be conclusive. conclusive.

Knock out and screening searches Knock out and screening searches can save client time and money can save client time and money

Trademark AvailabilityTrademark Availability

First place to turn to is First place to turn to is USPTO.GOVUSPTO.GOV Searching techniques: basic and Searching techniques: basic and

structured structured Basic search is a knock-outBasic search is a knock-out Structured allows for more specific Structured allows for more specific

searches by adding in goods/services, searches by adding in goods/services, class or other information class or other information

USPTO – step 1USPTO – step 1

USPTO – step 2USPTO – step 2

Basic Search

Structured Search

Example #1 – Basic Example #1 – Basic SearchSearch

Client is interested in registering the Client is interested in registering the mark JEWELRY HYGIENE for use in mark JEWELRY HYGIENE for use in connection with a jewelry cleaning connection with a jewelry cleaning device device

First, conduct knock out search to see if First, conduct knock out search to see if there are any direct hits for an identical there are any direct hits for an identical mark. mark.

If you find a direct hit, you avoid If you find a direct hit, you avoid spending time and money with further spending time and money with further searching searching

USPTO – basic search #1USPTO – basic search #1

USPTO – basic search USPTO – basic search Example #1Example #1

Structured search - Structured search - Example #2 Example #2

Client is interested in registering the Client is interested in registering the mark mark ““BUCKYBUCKY”” in connection with in connection with puzzles (Class 28)puzzles (Class 28)

You first conduct a knock out search You first conduct a knock out search and many hits turn up. and many hits turn up.

You must narrow your search criteria. You must narrow your search criteria. By using the structured search engine By using the structured search engine

you can put the mark in one field and you can put the mark in one field and the class or goods/services in the the class or goods/services in the second field to narrow the resultssecond field to narrow the results

USPTO – search #2USPTO – search #2

Searches for foreign Searches for foreign registered marksregistered marks

WIPO global brand database WIPO global brand database OHIM eSearch Plus OHIM eSearch Plus CIPO (Canadian TM database)CIPO (Canadian TM database) UK TM OfficeUK TM Office

Example #3 - Search for Example #3 - Search for International RegistrationsInternational Registrations

Example #4 - Search for Example #4 - Search for European Community European Community

TrademarksTrademarks

Places to search for Places to search for common law trademark common law trademark

rightsrights Business/trade name databases Business/trade name databases Search engines: bing.com, Search engines: bing.com,

google.com, yahoo.comgoogle.com, yahoo.com Telephone directory databasesTelephone directory databases Boliven Network Boliven Network Amazon.comAmazon.com

Example #5 - common law Example #5 - common law trademark searchtrademark search

Other places to search for trademark Other places to search for trademark availability and other information (more availability and other information (more

comprehensive review)comprehensive review)

Markify Markify TMarque TMarque SurfIP SurfIP TMview TMview Namecheck Namecheck

Markify.com - Example Markify.com - Example #6 #6

TMarque.com (U.S. TMarque.com (U.S. trademarks) Example #7 trademarks) Example #7

TMarque.com (foreign TMarque.com (foreign trademarks)trademarks)Example #7 Example #7

TMarque.com (social media TMarque.com (social media use)use)

Example #7 Example #7

TMarque.com (social TMarque.com (social media use )media use )

Trademark Trademark Distinctiveness Distinctiveness Prior to registering a mark, or during Prior to registering a mark, or during

prosecution, a trademarkprosecution, a trademark’’s s distinctiveness might be called into distinctiveness might be called into questionquestion

For instance, you may need to counsel For instance, you may need to counsel your client on the distinctiveness of the your client on the distinctiveness of the mark – it may be either:mark – it may be either: Primarily merely a surnamePrimarily merely a surname Merely descriptiveMerely descriptive Geographically descriptiveGeographically descriptive Has a foreign translation that is descriptiveHas a foreign translation that is descriptive

Primarily Merely a Primarily Merely a Surname? Surname?

Whether the surname is rare and Whether the surname is rare and whether the term has any recognized whether the term has any recognized meaning other than as a surname meaning other than as a surname

Make sure records searched are current Make sure records searched are current and limited to the U.S. (Google searches and limited to the U.S. (Google searches not recommended) not recommended)

Search white pages Search white pages (http://www.whitepages.com/)(http://www.whitepages.com/)

How Many of Me? How Many of Me? http://howmanyofme.com/search/http://howmanyofme.com/search/

Onelook.com (to see if mark has meaning other Onelook.com (to see if mark has meaning other than a surname)than a surname)

Dictionary.com (to see if mark has meaning Dictionary.com (to see if mark has meaning other than a surname)other than a surname)

Primarily Merely a Primarily Merely a Surname Search Example Surname Search Example

#8 #8 Client is interested in registering the Client is interested in registering the

mark mark ““GLAZERGLAZER”” for use in connection for use in connection with potterywith pottery

You need to counsel the client on You need to counsel the client on potential distinctiveness issues that may potential distinctiveness issues that may be raised during prosecution. be raised during prosecution.

You conduct a search on OneLook.com to You conduct a search on OneLook.com to see if the mark has any other meaning see if the mark has any other meaning besides as a surname and a search on besides as a surname and a search on HowManyofMe.com to see if the HowManyofMe.com to see if the proposed mark is a rare surnameproposed mark is a rare surname

Primarily Merely a Primarily Merely a Surname? Any other Surname? Any other

meanings? Example #8meanings? Example #8

Primarily Merely a Primarily Merely a Surname? How rare is the Surname? How rare is the

name? Example #8name? Example #8

Merely descriptiveMerely descriptive If a mark is descriptive of the nature, quality, If a mark is descriptive of the nature, quality,

function, purpose, feature of characteristic of the function, purpose, feature of characteristic of the good or service it is non-distinctive and cannot be good or service it is non-distinctive and cannot be registered on the Principal Register without a registered on the Principal Register without a showing of acquired distinctiveness. showing of acquired distinctiveness.

If a mark is considered descriptive it could present If a mark is considered descriptive it could present a problem for the client during prosecution. Better a problem for the client during prosecution. Better to determine ahead of time to warn the client.to determine ahead of time to warn the client.

Search for meanings of the mark on: Search for meanings of the mark on: Dictionary.comDictionary.com Onelook.comOnelook.com http://www.merriam-webster.com/http://www.merriam-webster.com/ Google search (to determine third party Google search (to determine third party

descriptive uses)descriptive uses) Known competitorKnown competitor’’s websites to see if they are s websites to see if they are

using the mark to describe their product/service using the mark to describe their product/service Wikipedia Wikipedia

Merely Descriptive – Merely Descriptive – Example #9Example #9

Client is interesting in registering the mark Client is interesting in registering the mark ““GOODIE HOODIEGOODIE HOODIE”” for use in connection for use in connection with hooded sweatshirts.with hooded sweatshirts.

Is Is ““HoodieHoodie”” merely descriptive of the goods? merely descriptive of the goods? Conduct Google search to reveal third party Conduct Google search to reveal third party

descriptive uses of the mark with similar descriptive uses of the mark with similar goodsgoods

Conduct a search of dictionary.com to see if Conduct a search of dictionary.com to see if the mark has a definition which defines the the mark has a definition which defines the goodsgoods

Merely descriptive - search for Merely descriptive - search for meaning Example #9meaning Example #9

Merely descriptive – Google search Merely descriptive – Google search shows third party uses – Example shows third party uses – Example

#9#9

Geographically Geographically descriptivedescriptive

primarily geographically descriptive of the primarily geographically descriptive of the origin of applicantorigin of applicant’’s goods and/or services. s goods and/or services. (1) the primary significance of the mark must be (1) the primary significance of the mark must be

geographic (i.e., the mark names a particular geographic (i.e., the mark names a particular geographic place or location);geographic place or location);

(2) purchasers would be likely to make a goods-(2) purchasers would be likely to make a goods-place or services-place association (i.e., purchasers place or services-place association (i.e., purchasers are likely to believe the goods or services originate are likely to believe the goods or services originate in the geographic location identified in the mark); in the geographic location identified in the mark); andand

(3) the goods and/or services originate in the place (3) the goods and/or services originate in the place identified in the mark. identified in the mark.

Geographic marks lack distinctiveness and Geographic marks lack distinctiveness and could pose an issue for your client during could pose an issue for your client during prosecutionprosecution

Geographically Geographically descriptivedescriptive

Places to searchPlaces to search Google (Google Maps)Google (Google Maps) WikipediaWikipedia

* you may need to use the term * you may need to use the term ““locationlocation”” or phrase or phrase ““geographic locationgeographic location”” in search in search engines to get resultsengines to get results

Geographically descriptive Geographically descriptive Example #10Example #10

Client is interested in registering Client is interested in registering MOUNT WASHINGTON RESORT & MOUNT WASHINGTON RESORT & SPA for hotel and resort services. SPA for hotel and resort services.

Search Wikipedia and Google (or Search Wikipedia and Google (or Google Maps) for Google Maps) for ““Mount Mount WashingtonWashington”” to determine if it is a to determine if it is a placeplace

Geographically descriptiveGeographically descriptiveExample #10Example #10

Foreign Foreign translation/equivalenttranslation/equivalent

The The doctrine of foreign equivalentsdoctrine of foreign equivalents is a is a rule which requires the trademark office to rule which requires the trademark office to translate foreign words in determining translate foreign words in determining whether they are registrable as whether they are registrable as trademarks, or confusingly similar with trademarks, or confusingly similar with existing marksexisting marks

Search to see if the mark has a meaning in Search to see if the mark has a meaning in a foreign language and then determine if a foreign language and then determine if the translation is descriptive of the product the translation is descriptive of the product or service or service

Dictionary.com translatorDictionary.com translator Yahoo Babel FishYahoo Babel Fish Onelook.comOnelook.com

Foreign translation – Foreign translation – Example #11Example #11

Client is interested in registering the Client is interested in registering the mark mark ““SERIOSERIO”” for use in connection for use in connection with furniture with furniture

You need to know if the mark has You need to know if the mark has any meaning in a foreign language any meaning in a foreign language

Conduct search OneLook.com using Conduct search OneLook.com using ““translationtranslation”” option option

Foreign Translation - Foreign Translation - Example #11Example #11

Trademark PolicingTrademark Policing

On private websitesOn private websites Online stores (eBay, Amazon) Online stores (eBay, Amazon) YouTube/Twitter and social mediaYouTube/Twitter and social media Monitoring trademark use in Monitoring trademark use in

keywords and adwords keywords and adwords

Finding and establishing Finding and establishing trademark infringement trademark infringement

Use Google, Yahoo and Bing (to Use Google, Yahoo and Bing (to find evidence of infringement) find evidence of infringement)

Secretary of State (to establish Secretary of State (to establish ownership, view officers and learn ownership, view officers and learn age of company) age of company)

Way back machine (to find possible Way back machine (to find possible date of first use)date of first use)

Whois (to establish ownership)Whois (to establish ownership)

Trademark Policing – Trademark Policing – Example #12Example #12

Your client owns the mark GLAM Your client owns the mark GLAM CENTRAL STATION for use in CENTRAL STATION for use in connection with cosmetics since 2007 connection with cosmetics since 2007

Client learns of competing company Client learns of competing company using the mark GLAM CENTRAL using the mark GLAM CENTRAL STATION SALON for hair salon services STATION SALON for hair salon services

Prior to sending Cease and Desist letter, Prior to sending Cease and Desist letter, need to determine if client has prior need to determine if client has prior rights in the markrights in the mark

Trademark Policing – Example #12Trademark Policing – Example #12Search whois for contact information and Search whois for contact information and

creation datecreation date

Trademark Policing – Example #12Trademark Policing – Example #12Search Sec. of State for incorporation Search Sec. of State for incorporation

datedate

Trademark Policing – Example #12Trademark Policing – Example #12Search Search Wayback machine for prior use of the Wayback machine for prior use of the

markmark

Trademark Policing for Trademark Policing for counterfeit goodscounterfeit goods

Conduct search at online storeConduct search at online store eBay.comeBay.com Alibaba.comAlibaba.com Amazon.comAmazon.com

follow up Google/SOS searches to follow up Google/SOS searches to corroborate ownership data corroborate ownership data

Trademark Policing for Use Trademark Policing for Use on Social Media websiteson Social Media websites

When searching, keep in mind not all When searching, keep in mind not all uses of a clientuses of a client’’s mark are infringement s mark are infringement – first amendment considerations– first amendment considerations

Generally, you are looking for Generally, you are looking for unauthorized use of mark as a unauthorized use of mark as a username or photousername or photo

Places to search:Places to search: NamechecklistNamechecklist Namechk.comNamechk.com TrademarkiaTrademarkia TMarque.comTMarque.com Namecheck.comNamecheck.com Knowem?Knowem?

Example #13 - Monitor use of Example #13 - Monitor use of mark on Social Media websitesmark on Social Media websites

Client owns the famous mark, BROOKSTONE, Client owns the famous mark, BROOKSTONE, which is conducive to unauthorized use on social which is conducive to unauthorized use on social media websitesmedia websites

Customers are lead to believe that the use of the Customers are lead to believe that the use of the famous mark as a username or user photo on a famous mark as a username or user photo on a social media website page means that the page is social media website page means that the page is affiliated with your client affiliated with your client

You are asked to regularly monitor social media You are asked to regularly monitor social media uses for your client uses for your client

Conduct searches on websites where all social Conduct searches on websites where all social media uses are considered and allows for easy media uses are considered and allows for easy review of any use to determine if it is authorized review of any use to determine if it is authorized or unauthorized or unauthorized

Example #13 – Social Media Example #13 – Social Media Search using Namechk.comSearch using Namechk.com

Example #13 – Social Media Example #13 – Social Media

Search on trademarkia.comSearch on trademarkia.com

Domain Name Domain Name AvailabilityAvailability

Determine if domain name is available Determine if domain name is available for registration or when it might for registration or when it might become availablebecome available

Obtain comprehensive list of which Obtain comprehensive list of which TLDs are available for registering TLDs are available for registering

Search using:Search using: GoDaddy GoDaddy Network Solutions Network Solutions EuroDNS EuroDNS Namecheck.com Namecheck.com

Domain Name Availability – Domain Name Availability – Example #14Example #14

Client wishes to register Client wishes to register ““buckybucky”” for for all available top level domains all available top level domains

Conduct search to determine which Conduct search to determine which domains are taken and which are domains are taken and which are availableavailable

Domain Name Availability Domain Name Availability Namecheck.com – Example Namecheck.com – Example

#14#14

Domain Name Availability Domain Name Availability Go Daddy - Example #14 Go Daddy - Example #14

Cybersquatting Cybersquatting

Cybersquatting is registering, Cybersquatting is registering, trafficking in, or using a domain name trafficking in, or using a domain name with bad faith intent to profit from the with bad faith intent to profit from the goodwill of a trademark belonging to goodwill of a trademark belonging to someone else. someone else.

Types of common cybersquatting:Types of common cybersquatting: Mark registered with less common gTLDsMark registered with less common gTLDs TyposquattingTyposquatting Mark plus generic term or locationMark plus generic term or location Mark plus Mark plus ““couponcoupon”” Mark with dashesMark with dashes

Cybersquatting Cybersquatting Before sending a demand letter, or Before sending a demand letter, or

contemplating a UDRP action, you may contemplating a UDRP action, you may need to conduct an additional investigation need to conduct an additional investigation to get more informationto get more information

Search tools available on:Search tools available on: Domaintools.com Domaintools.com Whoishostingthis.com Whoishostingthis.com INTERNIC.NET INTERNIC.NET http://www.wipo.int/amc/en/domains/gtld/ (FOR http://www.wipo.int/amc/en/domains/gtld/ (FOR

DATABASE OF WIPO UDRP CASES AND DECISION)DATABASE OF WIPO UDRP CASES AND DECISION) http://www.icann.org/en/udrp/proceedings-list.htm http://www.icann.org/en/udrp/proceedings-list.htm

(ICANN(ICANN’’s database of decisions, not too user-friendly)s database of decisions, not too user-friendly) http://domains.adrforum.com/decision.aspx (NAF http://domains.adrforum.com/decision.aspx (NAF

database of decisions) (reputation of owner – database of decisions) (reputation of owner – domainer?)domainer?)

CybersquattingCybersquatting Before filing a UDRP action you may wish to Before filing a UDRP action you may wish to

evaluate the chance of the registrant defaulting. evaluate the chance of the registrant defaulting. The vast majority of UDRPs are defaults. The vast majority of UDRPs are defaults.

Here are some of the reasons (and ways to spot Here are some of the reasons (and ways to spot whether yours will likely fall into this category)whether yours will likely fall into this category) Respondent is a domainer (at least 500 names)Respondent is a domainer (at least 500 names) Respondent uses privacy (although this adversely Respondent uses privacy (although this adversely

impacts the ability to know if the Respondent is a impacts the ability to know if the Respondent is a domainer)domainer)

Respondent uses a non-US registrarRespondent uses a non-US registrar Registrar is known to have wholesale accounts for Registrar is known to have wholesale accounts for

domainersdomainers Domain is parkedDomain is parked

Cybersquatting – Cybersquatting – Example #15Example #15

Client is the owner of famous mark Client is the owner of famous mark ““PLANET FITNESSPLANET FITNESS””

The domain planetfitnesscoupons.com The domain planetfitnesscoupons.com has been registered without has been registered without authorizationauthorization

Client wishes to have the domain Client wishes to have the domain transferred to their accounttransferred to their account

Prior to filing UDRP action, look for Prior to filing UDRP action, look for more information on the registrantmore information on the registrant

Cybersquatting – Example #15Cybersquatting – Example #15Search to see if any adverse decisions Search to see if any adverse decisions

issues against Brian Rutherissues against Brian Ruther


Client is asking you to contact the Client is asking you to contact the hosting company for the domain name hosting company for the domain name 247PAYDAYLOANCASH.COM to get its 247PAYDAYLOANCASH.COM to get its trademark removed from the websitetrademark removed from the website

You need to know who the host is but You need to know who the host is but the information is not available on a the information is not available on a whois searchwhois search

Try searching whoishostingthis.com Try searching whoishostingthis.com and corroborate using DomainTools to and corroborate using DomainTools to make sure the IP addresses matchmake sure the IP addresses match

Case Study - ReviewCase Study - Review Clients are Maria and Lisa Soul. They are Clients are Maria and Lisa Soul. They are

partners in a new business venture where partners in a new business venture where they are hand making and selling footwearthey are hand making and selling footwear

They are interested in registering the mark They are interested in registering the mark ““SOUL SISTERSSOUL SISTERS”” for use in connection with for use in connection with footwear (Class 25)footwear (Class 25)

They are looking for a trademark They are looking for a trademark registration availability in the U.S. and registration availability in the U.S. and European UnionEuropean Union

They also seek your opinion on any pitfalls They also seek your opinion on any pitfalls that may be encountered during that may be encountered during prosecution of the mark in the U.S. prosecution of the mark in the U.S.

Finally, they want to immediately secure Finally, they want to immediately secure TLDs and register usernames with popular TLDs and register usernames with popular social media websites Facebook and Twittersocial media websites Facebook and Twitter

Make a checklist of issues Make a checklist of issues to reviewto review

Trademark Availability Trademark Availability Search U.S. and E.U.Search U.S. and E.U.

Trademark DistinctivenessTrademark Distinctiveness Search is the mark primarily merely a Search is the mark primarily merely a

surnamesurname Is the mark merely descriptiveIs the mark merely descriptive

Domain Name availabilityDomain Name availability All TLDsAll TLDs

Social Media AvailabilitySocial Media Availability

Trademark Availability Trademark Availability Search – U.S. Knock out Search – U.S. Knock out

search search

Trademark Availability Trademark Availability Search – U.S. Structured Search – U.S. Structured

search search

Trademark Availability Trademark Availability Search – European Search – European Community search Community search

Trademark Availability Trademark Availability Search – Common Law Search – Common Law

TrademarksTrademarks

Trademark Distinctiveness – Trademark Distinctiveness – Primarily Merely a Primarily Merely a

Surname?Surname?

Trademark Distinctiveness – Trademark Distinctiveness – Merely Descriptive?Merely Descriptive?

Domain Name Domain Name AvailabilityAvailability

Domain Name Availability Domain Name Availability (Namecheck.com)(Namecheck.com)

Social Media Availability Social Media Availability (Namecheck.com)(Namecheck.com)

ConclusionConclusion There is some risk to use and registration of There is some risk to use and registration of ““SOUL SOUL

SISTERSSISTERS”” in connection with footwear in the U.S. in connection with footwear in the U.S. because many third party common law rights were because many third party common law rights were revealed revealed

““SOUL SISTERSSOUL SISTERS”” appears to be available for appears to be available for registration in the European Community in registration in the European Community in connection with footwearconnection with footwear

““SoulSoul”” is a rare surname and has other meanings so it is a rare surname and has other meanings so it is unlikely to be deemed primarily merely a surnameis unlikely to be deemed primarily merely a surname

““SoulSoul”” is not descriptive of footwear, but it sounds like is not descriptive of footwear, but it sounds like ““solesole”” which is descriptive of footwear. May be an which is descriptive of footwear. May be an issue during prosecution of the trademark issue during prosecution of the trademark

Many top level domains are taken; however, newer Many top level domains are taken; however, newer gTLDs appear to be opengTLDs appear to be open

““Soul SistersSoul Sisters”” is available as a username on Facebook is available as a username on Facebook but not Twitter but not Twitter

Questions?Questions?