X

Thank you for sharing!

Your article was successfully shared with the contacts you provided.
Trademark law is hundreds of years old — and it’s showing its age. At many in-house legal departments, attorneys trying to track down trademark infringers pore over lengthy, bound paper reports. But this vestige of the Old World is shrinking, as a new generation of Web-based trademark search products tries 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 cybershysters, these services — for a fee — do the legwork for corporate legal departments. At the same time, they provide attorneys and staff with slick online tools to review and act on the information they uncover. And there’s a lot of information out there: According to the Patent and Trade Office, there are 2.9 million trademarks registered with the agency alone. The focus on managing brand portfolios comes at a time when globalization, Internet commerce, and industry consolidation are pushing trademark issues to the fore 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 — Apple Computer Inc.’s foray into online music sales, for instance, has sparked 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 New York-based CCH CorSearch Inc., North Quincy, Mass.-based Thomson & Thomson, and Madison, Wis.-based NameProtect Inc. 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 — the company says it does about 25,000 domestic searches a year — scours about 8 million files, says Andrew Popper, the company’s director of strategic marketing. All three services complete standard searches in three days for 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 200- to 300-page hard-copy reports. But in the past two years, CCH CorSearch, Thomson & Thomson, and NameProtect 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 pull up abstracts, in-depth ownership records, and summaries of Trademark Trial and Appeal Board proceedings easily. “It’s more interactive, so your mind is engaged,” says Manjari Datta, the associate general counsel of Blyth Inc., a $1.6 billion Greenwich, Conn., candle manufacturer that owns 1,600 trademarks worldwide. Datta has used CCH CorSearch Advantage since its April 2004 release. Because comprehensive trademark searches can contain thousands of results, services usually distill the initial reports into a more focused list — a task that also can now be done online. Search services offer various ways to prioritize 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 someone to assemble a new report and a chart as a word processing document. Blyth’s Datta says she and her 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,” says Datta. Sarah Westover, a senior legal assistant at St. Louis-based The May Department Stores Co., says she’s able to compile reports in a fourth of the time that it once took her. According to CCH CorSearch’s Popper, 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 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 NameProtect; CCH CorSearch’s IntelliCite Internet Watching Service; and Wilmington, Del.-based Corporation Service Co.’s IP Watch shine a light exclusively on the murky world of cyberspace. That’s where fly-by-night businesses and scam artists treat corporate brands like public property. And they go beyond the usual trademark filings. “When you’re watching the different trademark agencies, you’re basically watching law-abiding citizens,” says CSC manager of IP services and associate general counsel Gretchen Olive. “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 in the IP Watch suit lets attorneys do a reverse domain name search, bringing up all the domain names registered to a particular individual or street address. This kind of data is especially valuable at large corporations with numerous business units, such as American International Group Inc., says John Kirkpatrick, the New York-based insurance company’s URL manager. Kirkpatrick uses CSC’s 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, and cybersquatters swoop 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,” says Kirkpatrick. 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 San Francisco-based freelance writer.

This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.

To view this content, please continue to their sites.

Not a Lexis Advance® Subscriber?
Subscribe Now

Not a Bloomberg Law Subscriber?
Subscribe Now

Why am I seeing this?

LexisNexis® and Bloomberg Law are third party online distributors of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® and Bloomberg Law customers are able to access and use ALM's content, including content from the National Law Journal, The American Lawyer, Legaltech News, The New York Law Journal, and Corporate Counsel, as well as other sources of legal information.

For questions call 1-877-256-2472 or contact us at [email protected]

 
 

ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2021 ALM Media Properties, LLC. All Rights Reserved.