Trademark Investigation- What’s That?

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Why would an investigator be needed to assist in getting a trademark cleared and registered?  How could an investigator assist in monitoring and identifying commercial exploitation (infringement/counterfeiting)?

In the United States the United States Patent and Trademark Office (USPTO) has the duty of accepting trademark filings and having them reviewed (examined), rendering opinions, handling the opposition process and eventually registering and maintaining them.  Because the United States is a first to USE country and not a first to FILE country trademark investigations are often a key element in the Life Cycle of a Trademark.

CREATION – SCREENING – INVESTIGATION – FILING/REGISTRATION – PROTECTION – MAINTENANCE – COMMERCIAL EXPLOITATION

We often get involved following a full trademark or advanced Internet search to determine if common law rights exist for someone that used a mark in commerce, but has not obtained a Federal or State Registration. Common Law uses can often be found by searching Corporate Filings, Fictitious Business Names (FBN) or DBA’s, Phone Directories, Professional License Databases and many other business directories.

Our clients often call on us to answer the following questions;

  • When was the mark first used in commerce?
  • Can you identify the person or entity using this mark?
  • When did the mark appear on the subject’s website?
  • When did the subject cease use of the mark in commerce?
  • What types of goods and services are being sold bearing the mark?
  • Where are the goods and services being sold? (Statewide, Online, National, Global)
  • Determine channels of trade (Retail, Wholesale, Distributors)
  • Who are we tangling with? (Revenue, Size, Scope, Litigation History, Assets)
  • If the mark is no longer in use can you buy it and the accompanying domain name?
  • Can you make an undercover, evidentiary-trap buy, of the goods bearing the mark(s)?

We receive these inquiries on a daily basis and investigate cases throughout the world that give our clients answers to these important questions.  The investigation portion of the trademark life cycle is a key piece in giving the client the information that they need to make an important business decision.

The next question that we often get is, “This sounds great…but how do you do this?”  That is a tricky question because all cases have different aspects (pre-C&D Letter, pre-litigation, litigation, etc.).  The short answer is that we have been investigating these types of cases for well over 20 years and have trained investigators that know where to look for the information and how to frame questions in the proper context to verify pertinent information when interviewing sources.

We also have a network of “front companies” throughout the United States that allow us to obtain detailed information in a very discreet manner that does not jeopardize the integrity of the case (see picture above).  Additionally, our front companies allow us to secure undercover purchases of infringing or counterfeiting goods in the venue of choice based on where the goods are purchased and shipped.