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Trademark law is hundreds of years old — and is showing its age. At many in-house legal departments, attorneys trying to track down trademark infringers are still relegated to poring over thick, bound reports. But this vestige of the Old World is fading as a new generation of Internet-based trademark search products aims to modernize and simplify the job. Whether investigating the availability of a new product name or policing the Internet for domain name squatters and other cyberspace shysters, these services — for a fee — do the legwork for corporate legal departments. They also provide attorneys and others with slick online tools to review and act on the information they uncover. And there’s a lot of information out there. The U.S. Patent and Trademark Office currently has 2.9 million registered trademarks on file. The focus on managing brand portfolios comes at a time when globalization, online commerce and industry consolidation are pushing trademark issues to the forefront at many companies. Trademark audits have become standard due diligence in corporate mergers and acquisitions. And with technology companies expanding into new markets such as music and entertainment, the potential for similar brands to butt heads is greater than ever. For example, Apple Computer’s foray into online music sales, through its wildly popular iTunes service, triggered a high-profile lawsuit from Apple Corps, the Beatles’ record company. While many legal departments run preliminary trademark clearance searches for new products on their own, they usually farm out more thorough, comprehensive searches to service providers such as CCH CorSearch Inc. in New York, Thomson & Thomson in North Quincy, Massachusetts, and NameProtect Inc. in Madison, Wisconsin. These companies have access to specialized databases and directories, such as trademark listings and corporate databases, where they look for similar or confusingly similar trademarks. A typical CCH search scours about 8 million files, says Andrew Popper, the company’s director of strategic marketing. All three services complete standard searches in three days at a cost of about $500. Express searches are available in as little as a few hours for more than twice the price. Traditionally, search results were delivered in hard-copy reports that could run 200-300 pages. But the search companies over the past couple of years have all released online products that allow lawyers to sift through the data in different ways. Instead of constantly flipping back and forth between pages, an attorney using the online versions can easily pull up abstracts, in-depth ownership records and summaries of Trademark Trial and Appeal Board proceedings. “It’s more interactive so your mind is engaged,” says Manjari Datta, associate general counsel at Blyth Inc., a candle manufacturer in Greenwich, Connecticut, that owns 1,600 trademarks worldwide. Because comprehensive trademark searches can contain thousands of results, services usually distill the initial reports into a more focused list, a task that can also now be completed online. Search services offer various ways to rank the results, with color-coded tags and electronic notes that can be appended to each record. And while paralegals have traditionally had to manually type out the summary, copying all the relevant data from the initial results, the online products allow users to assemble new reports and charts as word processing documents. Datta says she and a paralegal can now complete a summary in about two or three hours instead of the eight hours it would take using paper. “There’s very little manpower here to help us prepare a detailed report like that,” she says. Sarah Westover, a senior legal assistant at St. Louis-based May Department Stores Company, says she’s able to compile reports in a fourth of the time that it once took her. According to Popper at CCH CorSearch, 75 of the company’s top 100 customers have already switched to electronic searches. All three services include access to their online tools in the price of a standard trademark clearance search. In-house law departments can also use new online tools to see if anyone is ripping off their brands. So-called watch services monitor U.S. and international trademark offices for new registrations that might infringe on a company’s brand. A new crop of services like VigilActive, also from NameProtec, CCH CorSearch’s IntelliCite Internet Watching Service and Corporation Service Company’s IP Watch in Wilmington, Delaware, shine a light exclusively on the murky world of cyberspace. That’s where fly-by-night businesses and scam artists regularly treat corporate brands like public property. “When you’re watching the different trademark agencies, you’re basically watching law-abiding citizens,” says Gretchen Olive, associate general counsel and manager of IP services at Corporation Service Company. “A cybersquatter is not going to go through the trouble and expense of registering a trademark to exploit your brand.” The Internet monitoring services do more than merely identify Web site addresses that use a company’s trademark improperly. They examine how a particular brand is being misused throughout the e-commerce universe, including product names and descriptions on shopping sites, Web site metatags (which describe the contents of Web pages in the source code), discussion groups and spam messages. Vigil-Active allows in-house counsel to take immediate action, such as dispatching cease-and-desist messages to infringers. The Internet monitoring services charge annual subscription fees ranging from $3,300 to more than $20,000, depending on how many brands are monitored and whether a company receives monthly reports or opts for additional access to search tools. One tool offered by IP Watch allows attorneys to perform a reverse domain name search, bringing up all the domain names registered to a particular individual or street address. This kind of data is particularly valuable to large companies with numerous business units, says John Kirkpatrick, URL manager at American International Group, the New York-based insurance company. Kirkpatrick uses IP Watch to recover domain names that have fallen into others’ hands. Sometimes an AIG business unit launches a new product without registering the appropriate domain names, which invariably results in cybersquatters swooping in. Kirkpatrick then consults with company lawyers to determine whether they should negotiate or litigate to obtain the domain name. Kirkpatrick also uses the service to centralize the insurer’s vast collection of domain names, which are sometimes registered to employees in various departments, including marketing and information technology. “If that person leaves, it will be extremely difficult for the corporation to renew the registration of that domain name,” he says. In one recent case, he discovered that a business unit had let an outside marketing company register various domain names for a new AIG product line. By detecting the situation early and changing the registration to reflect AIG as the owner, Kirkpatrick says the company saved a lot of time and frustration. “Business relationships come and go,” says Kirkpatrick. “But if you are going to be on the Web and have a live Web site up, you better make sure that your registration is correct.” Alexei Oreskovic is a freelance writer in San Francisco.

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