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.
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.