How to Watch Your
Trademarks, Domains & Brands
    Online in Today’s World
                                 Presented by:
...
Agenda

•   Introduction
•   The Brand Life Cycle
•   Trademark Monitoring/Watching
•   Brand and Domain Name Monitoring
•...
Brand Life Cycle

•   Creation                    •   Filing and Registration
     – Brainstorming                 – USPTO...
Trademark
Monitoring/Watching
What is Trademark Watching?


Systematic monitoring and detection of any
potentially conflicting trademark applications
  ...
Current Market Trends:
U.S. Trademarks



    450000
    400000
    350000
    300000
    250000
    200000               ...
Why Monitor Your Trademarks?

• Don’t want to rely on the USPTO or other PTO’s
  to do it for you

  – Ex. Ladybug (garden...
Why Monitor Your Trademarks?

• Some countries are first to file jurisdictions

• Helps in the war against potential infri...
Items to Consider When Selecting a
        Watching Vendor

• Scope
    – Federal, International, State, Common Law, Corpo...
What Will be Monitored in a TM Watch?


• Official TM gazettes and journals are subscribed
  to from around the world
• Cl...
What if a Conflict is Found?

•   Do Nothing
•   Due Diligence
•   Cease and Desist Letter
•   File an Opposition
•   Co-e...
Benefits of Proactive TM Monitoring
       & Enforcement

• Gain Competitive
  Advantage
• Understand/Control Brand
  Expe...
Brand & Domain Name Monitoring
Agenda

• Introduction
    – Importance of internet traffic
    – How consumers navigate
    – Risks for consumer & impact...
Importance of Internet Traffic

• 1.2 billion active users (Internet statistics worldwide 2006)
• 18% growth in online ret...
How Consumers Navigate
 1 Direct Navigation – Type in domain name
• There are four major types of consumer
  navigation ch...
Risk for Consumers – Impact to Brands
1 Direct Navigation – Type in domain name




  Average visitor value = $5.69
How Consumers Navigate
2 Indirect Navigation – Search Engine Query
Risk for Consumers – Impact to Brands
2 Indirect Navigation – Search Engine Query




  Average visitor value for paid lis...
Impact of infringement to brands

• Infringement of navigational channels causes
  financial impact to brand owners
• Tota...
Brand Protection Objectives

• Brand-owners need to balance two objectives:
   – Protect against the most egregious conten...
Deciding Which Risks to Mitigate

• Can’t boil the ocean
   – 105 million domain names, 250 million web sites & 1 trillion...
Deciding Which Risks to Mitigate

• Mitigate OH NO!!! not OH WELL

                            X
                         ...
Mitigating Risk

• Three possible action paths when managing
  infringement
   – Enforce  Priority high  take immediate ...
Conclusions

•   Monitoring is a cost-effective solution for reconciling brand protection
    objectives

•   Sorts the “v...
Q&A

Kimberly Wieland                                  Robert Rozicki
Senior Director of Trademark Services           Seni...
About CSC
        •      Privately-held, 100+ year old company headquartered in Wilmington,
               Delaware
      ...
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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.

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

  1. 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. 2. Agenda • Introduction • The Brand Life Cycle • Trademark Monitoring/Watching • Brand and Domain Name Monitoring • Q&A
  3. 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. 4. Trademark Monitoring/Watching
  5. 5. What is Trademark Watching? Systematic monitoring and detection of any potentially conflicting trademark applications throughout the world
  6. 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. 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. 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. 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. 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. 11. What if a Conflict is Found? • Do Nothing • Due Diligence • Cease and Desist Letter • File an Opposition • Co-existence Agreement
  12. 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. 13. Brand & Domain Name Monitoring
  14. 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. 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. 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. 17. Risk for Consumers – Impact to Brands 1 Direct Navigation – Type in domain name Average visitor value = $5.69
  18. 18. How Consumers Navigate 2 Indirect Navigation – Search Engine Query
  19. 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. 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. 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. 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. 23. Deciding Which Risks to Mitigate • Mitigate OH NO!!! not OH WELL X X OH NO!! X X OH WellX X X X
  24. 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. 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. 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. 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

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