What To Do If Someone Takes Your Domain Name

What To Do If Someone Takes Your Domain Name

This a great article by domainSkate.  He conveys your options when someone takes the domain name you need or has registered a domain name that you want.  This is a well written article that explains the process in a simple and easy to follow manner that will allow you to remedy the situation.  domainSkate also recommends that you  monitor your domains and brands so that you are aware when someone acquires, buys or snaps up a domain name containing your brand.

Read the article by clicking HERE

domainSkate is currently used by brand owners, IP attorneys, marketing professionals and investigators to monitoring brand and domain names online.  It is free so I recommend you check it out.  CLICK HERE TO GIVE IT A TRY

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INTA 2015 Takeaways

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The INTA annual meeting which was held in San Diego set some records.  The last time the meeting was held in San Diego back in 2005 there were 7,000 registrants.  This year they had over 9,300 registrants.  The landmark B&B case “B&B Hardware vs. Hargis Industries” which will impact many corporate legal departments as well as the expanding domain name industry namely gTLDs were the big topics at the INTA Annual meeting this year.

The setup at this years meeting was ideal.  The close proximity of the San Diego Convention Center and surrounding hotels, restaurants and attractions made it easy for the registrants to get to meetings, roundtables, events and receptions.

INTA 2015 Takeaways

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The Secret to Success of Trademark Investigations

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The Secret to Success of Trademark Investigations

Trademark InvestigationsThe Secret to Success of Trademark Investigations

Who would think that shopping at Guess would be confused with shopping at Gucci, but that is what resulted in a $4.66 million lawsuit filed by Gucci against the populist retailer, Guess.

A U.S. district court judge decided Gucci was indeed entitled to damages, claiming that Guess “Gucci-ized”  its products and infringed on Gucci’s trademark.

At the heart of the matter, trademarks of names, logos, jingles, slogans words or symbols are what separates identities worth billions of dollars. An innocent mistake or blatant infringement can cause irreparable damage to a company or individual. Investigating such an incident is critical to the brand’s survival in this highly competitive and technologically connected world we live in today.

Coming to close to another businesses name or using similar packaging, symbol or even a service in the same marketplace can cross the line of trademark infringement.

The success of trademark investigations rests heavily on the skills of the investigators.

Creating a New Trademark or Logo

Just when you think everything is all in place for your new business, there is the proverbial “knock on the door” that you have infringed on another companies trademark or logo.

This is not a small problem. Even if you back off immediately, the money that went into stationery, advertising and product development can cause a significant set back. A little work upfront could have prevented the problem.

Why Hire a Professional

It would seem it should be easy enough to find out if a name, symbol or logo is already being used just by searching on the Internet? Possibly, if you know where to go and what to look for. A trademark search is not simply keying in a name to a search engine and see what comes up.

Before you spend money on letterhead, cards, advertising and product development, it makes sense you are navigating in friendly water.

A thorough trademark search will investigate any similar federally registered marks and those that are still pending. It will check which marks have been cancelled or expired.

Trademark investigations research numerous sources of unregistered or similar users of certain marks, brand names and the trade names that are currently registered.

This kind of information won’t come up on a simple web search. For more information regarding trademark investigation, contact us today.

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Big Thanks to Marc Hankin and Provisors for Inviting Tim Santoni to Speak

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“How to Protect Your IP Assets”

Tim Santoni and Mark Hankin

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Best Browser to Surf the Web Anonymously

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If you are a legal assistant, paralegal, brand owner, brand protector or attorney you need to stay up to date on the latest and greatest tools that will allow you to do some digging without leaving a trace.  If you are looking for the best browser to surf the web anonymously look no further than Tor.

The Tor browser is an open source browser that is completely free.  It will run on all your popular devices that run on Windows, Apple, Linux / Unix and Android.

What are some practical uses for this anonymous browser you might ask?  When we are making undercover purchases from subject’s online this service allows us to mask who we are and where we are.  This is important if you truly want to remain anonymous.  If you are just searching for information and products on a subject’s website keep in mind that many companies are tracking IP addresses of website viewers can reverse your IP address back to your company or law firm.  If you work for the government or law enforcement you certainly don’t want your IP address left behind on the website of a potential target or key witness.  If you are whistleblower and want to truly be anonymous you can utilize the Tor browser to further insulate yourself.

Keep in mind that your search results with many popular search engines like Google, Bing and Yahoo will likely be effected when using the Tor browser.  We encourage you to conduct identical searches (“Electronics Store”) in both Tor and a traditional search engine to see the difference.

Our team of investigators utilizes the Tor browser for a variety of investigative tasks.  In speaking with our team they point out the fact it is a free resource, but it can take a bit longer for pages to load.

We would enjoy to hear your comments on this browser or any other browser you find useful for surfing the web anonymously.  Contact us today or leave your comments below.

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Pretexting is NOT a naughty word when it comes to Trademark Investigations

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Pretexting is NOT a naughty word when it comes to Trademark InvestigationsPretexting

When it comes to trademark investigations the use of pretexting is NOT forbidden.  The word “pretexting” brings to mind the scandal involving HP where the board members utilized investigators to pretext in order to obtain phone records. In this case the word pretexting is defined as impersonating someone else to gain access to private or protected information, such as phone records or financial information.

According the FTC the Pretexting provision in the Gramm-Leach-Bliley under subtitle B is defined as “Fraudulent Access to Financial Information.”

Pretexting is NOT a naughty word when it comes to Trademark Investigations

The use of pretexting in Trademark Investigations is quite different.

An experienced trademark investigator will work to obtain as much information via Internet searches, commercial database searches, website inspections (current & archived), corporate records, business filings, trademark filings, trade journals and other databases.  The goal of this research is to obtain as much background information on the industry and businesses being investigated, so that they can approach third party sources within a suitable context to confirm and or clarify several key pieces of information (Date of First, Non-Use, Abandonment, Last Date of Use in Commerce, Scope of Use, Channels of Trade as well as Goods/Services bearing the mark).

In an article published by  of Faegre Baker Daniels “In Trademark Investigations, “Pretexting” is Not a Naughty Word” the authors reference several cases where investigators posing as a typical customer were not found to be violating any sort of laws regarding contacting represented parties.  In one decision it is clear that if the investigator is not deceitful and does not push the boundaries of a typical client interaction that the information obtained is admissible and the actual contact with the subject business is not deemed unethical.  Further in many of these cases the subject business being contact was engaged in deceitful and unlawful acts which further weighed on the courts in their decisions.

When you engage with a trademark investigator it is crucial that you ask them questions about their methods and experience to insure that they will not create any situation that can be construed as unethical or illegal, which intern could get you and your client in trouble with the court.

Remember, pretexting is NOT a naughty word when it comes to Trademark Investigations.
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Trademark Nonuse/In Use Investigations- USA v. China

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Trademark protection had long afforded American companies a competitive marketplace with a fair playing field. All that can change as you begin to operate your business internationally.  To get the basics, visit the United States Patent and Trademark Office to orient yourself on what you need to know to get started on protecting your intellectual property.

In the United States, the most common reason to launch into a trademark in-use investigation is to determine if the mark is in fact being used in commerce, how it is being used and the date of first use.  Further it is important to know when the mark was first used in commerce, how it was and is being used, the scope of the use, the goods or services it is being used on and if it is no longer in use (abandonment) when did the use cease.

Protecting IP in China

For those businesses venturing out to the rapidly growing economy of China, it is necessary to look at the role that in-use or nonuse trademark investigations are conducted in China. Trademark  use investigations have been an important and necessary practice in the United States for quite some time, but that may change outside of our borders.  The U.S. is a first to use, not first to file country, which means that “common law” uses of a mark need to be uncovered and investigated.  In order to effectively conduct searches and investigations in China it is essential that your investigation partner has access to databases compiled via advanced web harvesting of unstructured data, which allows an investigative analyst to leapfrog from a single source dependency to run more cost effective searches with greater cost efficiency.

Abandoned Marks and Squatters

A mark is considered abandoned when it’s use has been discontinued with no intent to resume (See 15 U.S.C. § 1127).  In China there are similar laws and the courts have provisions that indicate the breadth of the search that must be conducted to determine nonuse.

According to Anthony Tong of Robin Bridge & John Liu in Hong Kong, when faced with a refusal on relative grounds in China, it is prudent to search popular Web portals such as sina.com.cn and baidu.com.cn to look for references to the cited mark. Unless the searching turns up many references, a nonuse application is often recommended because it is an inexpensive approach. Indeed, Tong posits that investigations are not even particularly necessary because the burden of proof is on the trademark owner, exhaustive searching is near impossible given the size of China, and it is not uncommon to find trademark owners submitting dubious evidence of use even where investigation proves nonuse.

In the U.S. we have squatters that sit on domain names hoping to make money when the brand owner or mark owner wants the digital rights to their name.  In the coming years in China, mark owners will have to prove use of their mark(s) if they want to prevent losing them due to nonuse.  That said nonuse investigations in China will likely be more common in the future.

Help Protecting Your IP Abroad

It is vital that you evaluate the use of your intellectual property not only within your country of origin, but also protect your rights abroad. Start by selecting an investigator with worldwide to avoid issues that can escalate costs and increase the time required to provide verified information.  James Tunkey, COO of I-OnAsia points out that, “Today’s brand protection spend in China is less expensive that in the US on an apples-to-apples basis.”  Tunkey adds, “It is also important to note that Chinese targets are typically manufacturers and the weighted ROI on China spend is greater than it would be in the US.”

For those with an eye on China, our partner I-OnAsia gives us boots on the ground with relationships and information sources that are trusted and quick to respond. Start your IP protection plan by contacting us.

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Getting the Legal System to Work for You When it Comes to IP Enforcement

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Pursue a civil or criminal remedy depending on the nature of the product being counterfeited.  Typically products that can put the public’s well-being in danger (pharmaceuticals, food, tobacco, medical devices, auto parts, airplane parts) grab the attention of the District Attorneys, U.S. Attorneys & Law Enforcement Agencies (FBI, DEA, ICE).

In most cases, law enforcement and the courts want as much information on the product being sold and people or company behind it.  They want to know where counterfeited products are being sold, how test purchases were made and shipped, who was selling the product, the size and scope of the counterfeiter’s operation, all locations under the control of the counterfeiter, and general background information on the operation and the principals. The main culprits will be further examined to see if there were any prior run in’s with the law and arrests or cases where they were involved in the sale and or distribution of counterfeit goods.

4 Thing to Consider When Enforcing Your IP Rights against a Counterfeiter via Raid or Ex Parte Seizure Order.

1)   What is the end goal?  Shut down the operation?  Obtain intelligence on how and where the subject is getting the counterfeit goods from?  Obtain an injunction?  Obtain a judgment and collect or seize assets?

2)   What kind of information will be available at the time of the raid or seizure?  Product, trucks, equipment, computers, servers, laptops, external storage devices, labels, printing materials, & shipping records are most typical.

3)   What type of threat is the infringer to your team? Is there a chance for retaliation or harm?  Do they possess drugs or weapons?

4)   How will you seize and inventory all infringing products? The devil is in the details if you want to keep the court on your side and get what your client wants.  Be prepared to provide any and all items included in the order.  Document entry and exit on video to protect from liability.  Complete a detailed inventory list to include product, documents, and digital evidence authorized for seizure.  Also, be prepared for the unexpected and have your locksmith, digital forensic team and additional trucks ready on a moments notice.

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