Survey of Tademark Research : Tools & Strategies

Generally Excludes
• Trademark Searching Sites
– See Bonus Material at the End
• Trademark Counterfeiting
• Trademark Litigation

• Professors
• Lawyers
• Government
• Industry
• Research professionals

• No TM Practice Area
– TM topical filter
• West Topical Highlights - Trademarks
• All TM News
• Industry TM News
• IP News
• Legal Newspapers - 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

Don’t forget
social media
and alerts
Don’t forget
social media
and alerts

Free News
Trademark News
Tracking Service
Trademark News
Tracking Service

Lexis & Westlaw Blogs
• Syndicated
• Best law blogs
• Power of search engines
• Look in News – not secondary sources

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…

• Professional Associations
• Commercial CLE Vendors
• State Bars
• Law Firms
• Law Schools
• NGOs

• 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
– Lexis Overdrive (e-
books)
– Westlaw
– Intelliconnect
– Making of Modern Law

• Secondary Sources
• Footnotes
• Shepards & KeyCite
• MELcat

Periodicals
• Lexis
• Westlaw
• HeinOnline
• Legal Scholarship Network
• ABA Law Review Portal
• Google Scholar
• Print in IP Library
– Only in print or companion 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
• Practice Tools
• Open Web Tools
• Academic, e.g. LII
• Government, e.g. USPTO

All commercial case reporters allow
topic & key number searching
All commercial case reporters allow
topic & key number searching

• One box
• Field searching
• Topics & Key Numbers
– Browse
– Search within
– Combine with keywords
• KeyCite / Shepards

Darts-ip offers the most complete coverage
of IP decisions across all major IP markets
(EU, US, China, Commonwealth, Brazil,
etc...).

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

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

Procedural Manuals
• TRADEMARK MANUAL OF EXAMINING PROCEDURE
(TMEP)
– Lexis, Westlaw, Open Web
• Trademark Examination Guides
• Trademark Trial and Appeal Board Manual of
Procedure (TBMP)

Legislative History
• Print
– Appendices in
Treatises (e.g. Gilson)
• Microfiche
• Lexis
• Westlaw
• 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?

Trademark Searching/Watching
• Premium platforms and open web
• Lexis & Westlaw
• Challenging searching
– Sound alike marks
– Non-traditional trademarks
– Images
Trademark Explorer

Bonus Materials
How TM Lawyer uses the Open Web

Trademark SearchingTrademark Searching
Using the Free WebUsing the Free Web
Jennifer L. Morris, Esq.Jennifer L. Morris, Esq.
Grossman, Tucker, Perreault & Pfleger, PLLCGrossman, Tucker, Perreault & Pfleger, PLLC
Manchester, NHManchester, NH

What type of information might youWhat type of information might you
need to search for?need to search for?
 Trademark availabilityTrademark 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 availabilityDomain Name availability
 CybersquattingCybersquatting

Trademark AvailabilityTrademark Availability
 Many search engines available to get anMany search engines available to get an
understanding of the risks in adopting a newunderstanding of the risks in adopting a new
mark.mark.
 Knock out searches are useful to determine ifKnock out searches are useful to determine if
there is athere is a ““direct hitdirect hit”” with a prior registeredwith a prior registered
mark. They are not comprehensive enough to bemark. They are not comprehensive enough to be
conclusive.conclusive.
 Knock out and screening searches can saveKnock out and screening searches can save
client time and moneyclient time and money

Trademark AvailabilityTrademark Availability
 First place to turn to is USPTO.GOVFirst place to turn to is USPTO.GOV
 Searching techniques: basic and structuredSearching techniques: basic and structured
 Basic search is a knock-outBasic search is a knock-out
 Structured allows for more specific searches byStructured allows for more specific searches by
adding in goods/services, class or otheradding in goods/services, class or other
informationinformation

USPTO – step 1USPTO – step 1

USPTO – step 2USPTO – step 2
Basic Search
Structured Search

Example #1 – Basic SearchExample #1 – Basic Search
 Client is interested in registering the markClient is interested in registering the mark
JEWELRY HYGIENE for use in connectionJEWELRY HYGIENE for use in connection
with a jewelry cleaning devicewith a jewelry cleaning device
 First, conduct knock out search to see if thereFirst, conduct knock out search to see if there
are any direct hits for an identical mark.are any direct hits for an identical mark.
 If you find a direct hit, you avoid spending timeIf you find a direct hit, you avoid spending time
and money with further searchingand money with further searching

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

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

Structured search - Example #2Structured search - Example #2
““BUCKYBUCKY”” in connection with puzzles (Class 28)in connection with puzzles (Class 28)
 You first conduct a knock out search and manyYou first conduct a knock out search and many
hits turn up.hits turn up.
 You must narrow your search criteria.You must narrow your search criteria.
 By using the structured search engine you canBy using the structured search engine you can
put the mark in one field and the class orput the mark in one field and the class or
goods/services in the second field to narrow thegoods/services in the second field to narrow the
resultsresults

USPTO – search #2USPTO – search #2

Searches for foreign registered marksSearches for foreign registered marks
 WIPO global brand databaseWIPO global brand database
 OHIM eSearch PlusOHIM eSearch Plus
 CIPO (Canadian TM database)CIPO (Canadian TM database)
 UK TM OfficeUK TM Office

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

Example #4 - Search for EuropeanExample #4 - Search for European
Community TrademarksCommunity Trademarks

Places to search for common lawPlaces to search for common law
trademark rightstrademark rights
 Business/trade name databasesBusiness/trade name databases
 Search engines: bing.com, google.com,Search engines: bing.com, google.com,
yahoo.comyahoo.com
 Telephone directory databasesTelephone directory databases
 Boliven NetworkBoliven Network
 Amazon.comAmazon.com

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

Other places to search for trademark availability andOther places to search for trademark availability and
other information (more comprehensive review)other information (more comprehensive review)
 MarkifyMarkify
 TMarqueTMarque
 SurfIPSurfIP
 TMviewTMview
 NamecheckNamecheck

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

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

TMarque.com (foreign trademarks)TMarque.com (foreign trademarks)

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

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

Trademark DistinctivenessTrademark Distinctiveness
 Prior to registering a mark, or duringPrior to registering a mark, or during
prosecution, a trademarkprosecution, a trademark’’s distinctiveness mights distinctiveness might
be called into questionbe called into question
 For instance, you may need to counsel yourFor instance, you may need to counsel your
client on the distinctiveness of the mark – it mayclient on the distinctiveness of the mark – it may
be either: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 Surname?Primarily Merely a Surname?
 Whether the surname is rare and whether theWhether the surname is rare and whether the
term has any recognized meaning other than asterm has any recognized meaning other than as
a surnamea surname
 Make sure records searched are current and limitedMake sure records searched are current and limited
to the U.S. (Google searches not recommended)to the U.S. (Google searches not recommended)
 Search white pages (http://www.whitepages.com/)Search white pages (http://www.whitepages.com/)
 How Many of Me? http://howmanyofme.com/search/How Many of Me? http://howmanyofme.com/search/
 Onelook.com (to see if mark has meaning other than aOnelook.com (to see if mark has meaning other than a
surname)surname)
 Dictionary.com (to see if mark has meaning other than aDictionary.com (to see if mark has meaning other than a
surname)surname)

Primarily Merely a Surname SearchPrimarily Merely a Surname Search
““GLAZERGLAZER”” for use in connection with potteryfor use in connection with pottery
 You need to counsel the client on potentialYou need to counsel the client on potential
distinctiveness issues that may be raised duringdistinctiveness issues that may be raised during
prosecution.prosecution.
 You conduct a search on OneLook.com to seeYou conduct a search on OneLook.com to see
if the mark has any other meaning besides as aif the mark has any other meaning besides as a
surname and a search on HowManyofMe.com tosurname and a search on HowManyofMe.com to
see if the proposed mark is a rare surnamesee if the proposed mark is a rare surname

Primarily Merely a Surname? AnyPrimarily Merely a Surname? Any
other meanings? Example #8other meanings? Example #8

Primarily Merely a Surname? HowPrimarily Merely a Surname? How
rare is the name? Example #8rare is the name? Example #8

Merely descriptiveMerely descriptive
 If a mark is descriptive of the nature, quality, function,If a mark is descriptive of the nature, quality, function,
purpose, feature of characteristic of the good or service it ispurpose, feature of characteristic of the good or service it is
non-distinctive and cannot be registered on the Principalnon-distinctive and cannot be registered on the Principal
Register without a showing of acquired distinctiveness.Register without a showing of acquired distinctiveness.
 If a mark is considered descriptive it could present a problemIf a mark is considered descriptive it could present a problem
for the client during prosecution. Better to determine aheadfor the client during prosecution. Better to determine ahead
of time to warn the client.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 descriptive uses)Google search (to determine third party descriptive uses)
 Known competitorKnown competitor’’s websites to see if they are using thes websites to see if they are using the
mark to describe their product/servicemark to describe their product/service
 WikipediaWikipedia

Merely Descriptive – Example #9Merely Descriptive – Example #9
 Client is interesting in registering the markClient is interesting in registering the mark
““GOODIE HOODIEGOODIE HOODIE”” for use in connectionfor use in connection
with hooded sweatshirts.with hooded sweatshirts.
 IsIs ““HoodieHoodie”” merely descriptive of the goods?merely descriptive of the goods?
 Conduct Google search to reveal third partyConduct Google search to reveal third party
descriptive uses of the mark with similar goodsdescriptive uses of the mark with similar goods
 Conduct a search of dictionary.com to see if theConduct a search of dictionary.com to see if the
mark has a definition which defines the goodsmark has a definition which defines the goods

Merely descriptive - search for meaningMerely descriptive - search for meaning

Merely descriptive – Google search showsMerely descriptive – Google search shows
third party uses – Example #9third party uses – Example #9

Geographically descriptiveGeographically descriptive
 primarily geographically descriptive of the origin ofprimarily geographically descriptive of the origin of
applicantapplicant’’s goods and/or services.s goods and/or services.
 (1) the primary significance of the mark must be geographic(1) the primary significance of the mark must be geographic
(i.e., the mark names a particular geographic place or(i.e., the mark names a particular geographic place or
location);location);
 (2) purchasers would be likely to make a goods-place or(2) purchasers would be likely to make a goods-place or
services-place association (i.e., purchasers are likely to believeservices-place association (i.e., purchasers are likely to believe
the goods or services originate in the geographic locationthe goods or services originate in the geographic location
identified in the mark); andidentified in the mark); and
 (3) the goods and/or services originate in the place identified(3) the goods and/or services originate in the place identified
in the mark.in the mark.
 Geographic marks lack distinctiveness and could poseGeographic marks lack distinctiveness and could pose
an issue for your client during prosecutionan issue for your client during prosecution

 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 phraseor phrase
““geographic locationgeographic location”” in search engines to get resultsin search engines to get results

 Client is interested in registering MOUNTClient is interested in registering MOUNT
WASHINGTON RESORT & SPA for hotelWASHINGTON RESORT & SPA for hotel
and resort services.and resort services.
 Search Wikipedia and Google (or Google Maps)Search Wikipedia and Google (or Google Maps)
forfor ““Mount WashingtonMount Washington”” to determine if it is ato determine if it is a
placeplace

Foreign translation/equivalentForeign translation/equivalent
 TheThe doctrine of foreign equivalentsdoctrine of foreign equivalents is a rule whichis a rule which
requires the trademark office to translate foreignrequires the trademark office to translate foreign
words in determining whether they are registrable aswords in determining whether they are registrable as
trademarks, or confusingly similar with existingtrademarks, or confusingly similar with existing
marksmarks
 Search to see if the mark has a meaning in a foreignSearch to see if the mark has a meaning in a foreign
language and then determine if the translation islanguage and then determine if the translation is
descriptive of the product or servicedescriptive of the product or service
 Dictionary.com translatorDictionary.com translator
 Yahoo Babel FishYahoo Babel Fish
 Onelook.comOnelook.com

Foreign translation – Example #11Foreign translation – Example #11
““SERIOSERIO”” for use in connection with furniturefor use in connection with furniture
 You need to know if the mark has any meaningYou need to know if the mark has any meaning
in a foreign languagein a foreign language
 Conduct search OneLook.com usingConduct search OneLook.com using
““translationtranslation”” optionoption

Foreign Translation - Example #11Foreign Translation - Example #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 keywords andMonitoring trademark use in keywords and
adwordsadwords

Finding and establishing trademarkFinding and establishing trademark
infringementinfringement
 Use Google, Yahoo and Bing (to find evidenceUse Google, Yahoo and Bing (to find evidence
of infringement)of infringement)
 Secretary of State (to establish ownership,Secretary of State (to establish ownership,
view officers and learn age of company)view officers and learn age of company)
 Way back machine (to find possible date ofWay back machine (to find possible date of
first use)first use)
 Whois (to establish ownership)Whois (to establish ownership)

Trademark Policing – Example #12Trademark Policing – Example #12
 Your client owns the mark GLAM CENTRALYour client owns the mark GLAM CENTRAL
STATION for use in connection with cosmeticsSTATION for use in connection with cosmetics
since 2007since 2007
 Client learns of competing company using theClient learns of competing company using the
mark GLAM CENTRAL STATION SALONmark GLAM CENTRAL STATION SALON
for hair salon servicesfor hair salon services
 Prior to sending Cease and Desist letter, need toPrior to sending Cease and Desist letter, need to
determine if client has prior rights in the markdetermine if client has prior rights in the mark

Search whois for contact information and creation dateSearch whois for contact information and creation date

Search Sec. of State for incorporation dateSearch Sec. of State for incorporation date

SearchSearch Wayback machine for prior use of the markWayback machine for prior use of the mark

Trademark Policing for counterfeitTrademark Policing for counterfeit
goodsgoods
 Conduct search at online storeConduct search at online store
 eBay.comeBay.com
 Alibaba.comAlibaba.com
 Amazon.comAmazon.com
 follow up Google/SOS searches tofollow up Google/SOS searches to
corroborate ownership datacorroborate ownership data

Trademark Policing for Use on SocialTrademark Policing for Use on Social
Media websitesMedia websites
 When searching, keep in mind not all uses of aWhen searching, keep in mind not all uses of a
clientclient’’s mark are infringement – firsts mark are infringement – first
amendment considerationsamendment considerations
 Generally, you are looking for unauthorizedGenerally, you are looking for unauthorized
use of mark as a username or photouse of mark as a username 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 mark on SocialExample #13 - Monitor use of mark on Social
Media websitesMedia websites
 Client owns the famous mark, BROOKSTONE, which isClient owns the famous mark, BROOKSTONE, which is
conducive to unauthorized use on social media websitesconducive to unauthorized use on social media websites
 Customers are lead to believe that the use of the famous mark asCustomers are lead to believe that the use of the famous mark as
a username or user photo on a social media website page meansa username or user photo on a social media website page means
that the page is affiliated with your clientthat the page is affiliated with your client
 You are asked to regularly monitor social media uses for yourYou are asked to regularly monitor social media uses for your
clientclient
 Conduct searches on websites where all social media uses areConduct searches on websites where all social media uses are
considered and allows for easy review of any use to determine ifconsidered and allows for easy review of any use to determine if
it is authorized or unauthorizedit is authorized or unauthorized

Example #13 – Social Media Search usingExample #13 – Social Media Search using
Namechk.comNamechk.com

Example #13 – Social Media Search onExample #13 – Social Media Search on
trademarkia.comtrademarkia.com

Domain Name AvailabilityDomain Name Availability
 Determine if domain name is available forDetermine if domain name is available for
registration or when it might become availableregistration or when it might become available
 Obtain comprehensive list of which TLDs areObtain comprehensive list of which TLDs are
available for registeringavailable for registering
 Search using:Search using:
 GoDaddyGoDaddy
 Network SolutionsNetwork Solutions
 EuroDNSEuroDNS
 Namecheck.comNamecheck.com

Domain Name Availability –Domain Name Availability –
 Client wishes to registerClient wishes to register ““buckybucky”” for all availablefor all available
top level domainstop level domains
 Conduct search to determine which domains areConduct search to determine which domains are
taken and which are availabletaken and which are available

Namecheck.com – Example #14Namecheck.com – Example #14

Go Daddy - Example #14Go Daddy - Example #14

CybersquattingCybersquatting
 Cybersquatting is registering, trafficking in, orCybersquatting is registering, trafficking in, or
using a domain name with bad faith intent tousing a domain name with bad faith intent to
profit from the goodwill of a trademarkprofit from the goodwill of a trademark
belonging to someone else.belonging to 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 plusMark plus ““couponcoupon””
 Mark with dashesMark with dashes

 Before sending a demand letter, or contemplating aBefore sending a demand letter, or contemplating a
UDRP action, you may need to conduct an additionalUDRP action, you may need to conduct an additional
investigation to get more informationinvestigation to get more information
 Search tools available on:Search tools available on:
 Domaintools.comDomaintools.com
 Whoishostingthis.comWhoishostingthis.com
 INTERNIC.NETINTERNIC.NET
 http://www.wipo.int/amc/en/domains/gtld/ (FOR DATABASEhttp://www.wipo.int/amc/en/domains/gtld/ (FOR DATABASE
OF WIPO UDRP CASES AND DECISION)OF WIPO UDRP CASES AND DECISION)
 http://www.icann.org/en/udrp/proceedings-list.htm (ICANNhttp://www.icann.org/en/udrp/proceedings-list.htm (ICANN’’ss
database of decisions, not too user-friendly)database of decisions, not too user-friendly)
 http://domains.adrforum.com/decision.aspx (NAF database ofhttp://domains.adrforum.com/decision.aspx (NAF database of
decisions) (reputation of owner – domainer?)decisions) (reputation of owner – domainer?)

 Before filing a UDRP action you may wish to evaluateBefore filing a UDRP action you may wish to evaluate
the chance of the registrant defaulting. The vastthe chance of the registrant defaulting. The vast
majority of UDRPs are defaults. majority of UDRPs are defaults.
 Here are some of the reasons (and ways to spotHere 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 impacts theRespondent uses privacy (although this adversely impacts the
ability to know if the Respondent is a domainer)ability to know if the Respondent is a domainer)
 Respondent uses a non-US registrarRespondent uses a non-US registrar
 Registrar is known to have wholesale accounts for domainersRegistrar is known to have wholesale accounts for domainers
 Domain is parkedDomain is parked

Cybersquatting – Example #15Cybersquatting – Example #15
 Client is the owner of famous markClient is the owner of famous mark ““PLANETPLANET
FITNESSFITNESS””
 The domain planetfitnesscoupons.com has beenThe domain planetfitnesscoupons.com has been
registered without authorizationregistered without authorization
 Client wishes to have the domain transferred toClient wishes to have the domain transferred to
their accounttheir account
 Prior to filing UDRP action, look for morePrior to filing UDRP action, look for more
information on the registrantinformation on the registrant

Search to see if any adverse decisions issues againstSearch to see if any adverse decisions issues against
Brian RutherBrian Ruther

 Client is asking you to contact the hostingClient is asking you to contact the hosting
company for the domain namecompany for the domain name
247PAYDAYLOANCASH.COM to get its247PAYDAYLOANCASH.COM to get its
trademark removed from the websitetrademark removed from the website
 You need to know who the host is but theYou need to know who the host is but the
information is not available on a whois searchinformation is not available on a whois search
 Try searching whoishostingthis.com andTry searching whoishostingthis.com and
corroborate using DomainTools to make surecorroborate using DomainTools to make sure
the IP addresses matchthe IP addresses match

Case Study - ReviewCase Study - Review
 Clients are Maria and Lisa Soul. They are partners in aClients are Maria and Lisa Soul. They are partners in a
new business venture where they are hand making andnew business venture where they are hand making and
selling footwearselling footwear
 They are interested in registering the markThey are interested in registering the mark ““SOULSOUL
SISTERSSISTERS”” for use in connection with footwear (Classfor use in connection with footwear (Class
25)25)
 They are looking for a trademark registration availabilityThey are looking for a trademark registration availability
in the U.S. and European Unionin the U.S. and European Union
 They also seek your opinion on any pitfalls that may beThey also seek your opinion on any pitfalls that may be
encountered during prosecution of the mark in the U.S.encountered during prosecution of the mark in the U.S.
 Finally, they want to immediately secure TLDs andFinally, they want to immediately secure TLDs and
register usernames with popular social media websitesregister usernames with popular social media websites
Facebook and TwitterFacebook and Twitter

Make a checklist of issues to reviewMake a checklist of issues to review
 Trademark AvailabilityTrademark Availability
 Search U.S. and E.U.Search U.S. and E.U.
 Trademark DistinctivenessTrademark Distinctiveness
 Search is the mark primarily merely a surnameSearch is the mark primarily merely a surname
 Is the mark merely descriptiveIs the mark merely descriptive
 Domain Name availabilityDomain Name availability
 All TLDsAll TLDs
 Social Media AvailabilitySocial Media Availability

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

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

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

Trademark Availability Search –Trademark Availability Search –
Common Law TrademarksCommon Law Trademarks

Trademark Distinctiveness –Trademark Distinctiveness –
Primarily Merely a Surname?Primarily Merely a Surname?

Trademark Distinctiveness – MerelyTrademark Distinctiveness – Merely
Descriptive?Descriptive?

(Namecheck.com)(Namecheck.com)

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

ConclusionConclusion
 There is some risk to use and registration ofThere is some risk to use and registration of ““SOUL SISTERSSOUL SISTERS””
in connection with footwear in the U.S. because many third partyin connection with footwear in the U.S. because many third party
common law rights were revealedcommon law rights were revealed
 ““SOUL SISTERSSOUL SISTERS”” appears to be available for registration in theappears to be available for registration in the
European Community in connection with footwearEuropean Community in connection with footwear
 ““SoulSoul”” is a rare surname and has other meanings so it is unlikelyis a rare surname and has other meanings so it is unlikely
to be deemed primarily merely a surnameto be deemed primarily merely a surname
 ““SoulSoul”” is not descriptive of footwear, but it sounds likeis not descriptive of footwear, but it sounds like ““solesole””
which is descriptive of footwear. May be an issue duringwhich is descriptive of footwear. May be an issue during
prosecution of the trademarkprosecution of the trademark
 Many top level domains are taken; however, newer gTLDsMany top level domains are taken; however, newer gTLDs
appear to be openappear to be open
 ““Soul SistersSoul Sisters”” is available as a username on Facebook but notis available as a username on Facebook but not
TwitterTwitter

Survey of Tademark Research : Tools & Strategies

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