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How to Watch Your Trademarks, Domains & Brands Online in Today’s World
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How to Watch Your Trademarks, Domains & Brands Online in Today’s World

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This presentation outlines why you want to monitor your brands, domains and trademarks and the risks you can avoid by doing so.

This presentation outlines why you want to monitor your brands, domains and trademarks and the risks you can avoid by doing so.

Published in: Business, Technology

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  • 1. How to Watch Your Trademarks, Domains & Brands Online in Today’s World Presented by: Kimberly Wieland, Esq. Corporation Service Company Robert Rozicki Corporation Service Company
  • 2. Agenda • Introduction • The Brand Life Cycle • Trademark Monitoring/Watching • Brand and Domain Name Monitoring • Q&A
  • 3. Brand Life Cycle • Creation • Filing and Registration – Brainstorming – USPTO • Screening • Protection – Narrow the list – Watching • Clearance • Maintenance – More exhaustive search – Filing renewals • Investigation • Commercial Exploitation – Still in use? – Licensing • Opinion – Available?
  • 4. Trademark Monitoring/Watching
  • 5. What is Trademark Watching? Systematic monitoring and detection of any potentially conflicting trademark applications throughout the world
  • 6. Current Market Trends: U.S. Trademarks 450000 400000 350000 300000 250000 200000 US TM Filings 150000 100000 50000 0 2000 2002 2004 2006 2008
  • 7. Why Monitor Your Trademarks? • Don’t want to rely on the USPTO or other PTO’s to do it for you – Ex. Ladybug (garden clogs) versus LadyB (shoes) mark • LadyB mark has a design element with a ladybug • Names are different but message is similar as are the goods
  • 8. Why Monitor Your Trademarks? • Some countries are first to file jurisdictions • Helps in the war against potential infringements • Allows you to “oppose” the mark in a timely fashion • Maintains your brand strength
  • 9. Items to Consider When Selecting a Watching Vendor • Scope – Federal, International, State, Common Law, Corporate Names, or Domain Names • Marks • Translations • Classes • Cost – Budget and Personnel • Reporting – Electronic or Paper
  • 10. What Will be Monitored in a TM Watch? • Official TM gazettes and journals are subscribed to from around the world • Close matches, phonetic matches, translations, transliterations, and anagrams to the mark supplied are searched • Frequency of watch notices varies – daily to yearly • Design marks – can also be searched and reported on
  • 11. What if a Conflict is Found? • Do Nothing • Due Diligence • Cease and Desist Letter • File an Opposition • Co-existence Agreement
  • 12. Benefits of Proactive TM Monitoring & Enforcement • Gain Competitive Advantage • Understand/Control Brand Experience • Strengthen Trademark Rights • Stop Diverted Customers & Revenues • Protect Customers & Their Brand Trust • Maximize Enforcement Resources
  • 13. Brand & Domain Name Monitoring
  • 14. Agenda • Introduction – Importance of internet traffic – How consumers navigate – Risks for consumer & impact to brands • Brand Protection Objectives • Deciding which risks to eliminate • Mitigating risk • Conclusions
  • 15. Importance of Internet Traffic • 1.2 billion active users (Internet statistics worldwide 2006) • 18% growth in online retail 2006 – 2007 (Forrester Research 2007) • 25% of all electronic purchases in 2006 researched online (Hall & Partners 2006) • Sales at e-commerce sites in 2006 reached $102.1 billion, a 24 percent increase over 2005 • Growing opportunities for 3rd parties to abuse/hijack brand traffic to feed own ROI models
  • 16. How Consumers Navigate 1 Direct Navigation – Type in domain name • There are four major types of consumer navigation channels Navigation Channel Infringement Type Impact Direct Navigation Cyber-squatting, typo’s, relevant, Traffic Diversion negative terms Counterfeit Sales Search Engine Website content, Word/meta-tag stuffing Corporate Disparagement Auction Sites Multiple sellers, auctions Offensive Content Trademark Infringement Email Phishing Compliance Abuse Logo Abuse Fraud False Affiliation Identity Theft
  • 17. Risk for Consumers – Impact to Brands 1 Direct Navigation – Type in domain name Average visitor value = $5.69
  • 18. How Consumers Navigate 2 Indirect Navigation – Search Engine Query
  • 19. Risk for Consumers – Impact to Brands 2 Indirect Navigation – Search Engine Query Average visitor value for paid listing = $1.60 Average visitor value for organic listing = $1.35
  • 20. Impact of infringement to brands • Infringement of navigational channels causes financial impact to brand owners • Total impact increases with time Impact Cumulative impact to brand over time Incremental impact to brand over time X X Time Infringement starts Infringement ends
  • 21. Brand Protection Objectives • Brand-owners need to balance two objectives: – Protect against the most egregious content – Minimize cost of monitoring/protecting brand online • Reconcile objectives by: – Prioritizing infringement navigation & content types – Determining extent of consumer exposure to infringement – Enforcing rights against infringements that are (a) egregious and (b) highly visible • Realize opportunity: – Reduce/optimize budget spent on protecting brand online & maintain brand value
  • 22. Deciding Which Risks to Mitigate • Can’t boil the ocean – 105 million domain names, 250 million web sites & 1 trillion web pages – Only concerned with some infringements • Framework needed to compare different infringements – www.brand.com  pay-per-click  Global  Current Market Priority ? – www.br4nd.co.uk  adult content  UK  Secondary Market Priority ? – www.sucks.fr/brand  negative reference  France  Not Active Priority ? • Prioritization depends on understanding of: – Similarity of domain to brand – Manner in which it is being used (content) – Market associated with content – Tolerance of brand to infringements – Size of consumer exposure to infringement
  • 23. Deciding Which Risks to Mitigate • Mitigate OH NO!!! not OH WELL X X OH NO!! X X OH WellX X X X
  • 24. Mitigating Risk • Three possible action paths when managing infringement – Enforce  Priority high  take immediate action – Track  Potential high priority  monitor for change – Ignore  Priority low  archive for compliance • Actions need to be managed within a “dynamic space” – Changing web space: web content + whois change – Taking action: multiple enforcement options – Case management: multiple workflow tools
  • 25. Conclusions • Monitoring is a cost-effective solution for reconciling brand protection objectives • Sorts the “vital few” from the “trivial many” – Use Advanced technology gets all the results – Comprehensively analyze relevant results – Prioritize the most important results (Oh well vs. OH NO) – Building strong cases for enforcement • Case Management creates “seamless workflow” through – Advanced tracking, polices activity for change – Effective enforcement protects your brand rights – Centralize management creating business transparency – Flexible reporting creates visibility between cases • Think long term and seek advice
  • 26. Q&A Kimberly Wieland Robert Rozicki Senior Director of Trademark Services Senior Brand Advisor Corporation Service Company Corporation Service Company 800.927.9801 ext. 2155 212-299-5653 kimberly@cscinfo.com rrozicki@cscinfo.com Q&A To ask a question, please type your inquiry into the Q&A panel
  • 27. About CSC • Privately-held, 100+ year old company headquartered in Wilmington, Delaware • CSC operates offices in the US, Canada, Germany, France and the UK and employs over 1,000 people worldwide • CSC is dedicated reducing risks and costs for our clients by providing: – Corporate Governance & Compliance Services – Corporate Identity Protection Services – Litigation & Matter Management Services – Deal & Transaction Support Services • The CSC suite of Corporate Identity Protection services includes: – Trademark Screening, Searching and Watching – Internet Brand Monitoring – Domain Name Registration, Management and Monitoring • CSC is the trusted partner of 81 of the top 100 Best Global Brands* For more information about how CSC can help you protect your brands, please email WebSeminars@cscinfo.com * As ranked in the Interbrand® Best Global Brands Report