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Archived updates for Sunday, January 21, 2007

A Low-Cost, Trademark Portfolio Management Policy

One approach to managing your trademark portfolio is based upon obtaining and maintaining federal trademark registrations for each brand family head in typed, stylized, and design forms, if any, in each country where you have a significant market share. The costs and benefits of federal trademark registrations are generally described "Basic Facts About Trademarks" from the U.S. Patent and Trademark Office. In order to minimize the cost of managing the trademark portfolio, you may also want to consider allowing registrations to expire for other, secondary marks, including those which are no longer in use. Once all of the registrations are issued for the current brand family, you will then be in a better position to use them properly and consistently with the "®" symbol. For secondary marks within the family, you can simply mark them with the "TM" symbol indicating unregistered "common law" trademark rights and retain specimens and dates of earliest use for those marks within the parameters of its document retention policy.
For all new words, phrases, or symbols that will be used in other than a merely descriptive sense, conducting a trademark clearance search is generally a good idea in order to determine the mark's availability for use. For marks that will be relatively easy to change if you are accused of trademark infringement, such as slogans used in publications with limited circulation, a quick and inexpensive "knockout" search of the U.S. trademark register and Internet search engines for closely similar marks may be all that is necessary. Knockout word searches can often be conducted via the Internet, often on the same day that they are requested. In contrast, knockout design mark searches are usually conducted by various service providers using the records at the USPTO's Trademark Search Library.

For marks that are going to be used more-extensively, such as for the introduction of a new product line, consider a more-comprehensive "full search" of U.S. trademark records along with "common law" trademark records for marks that are in use, but not registered. Because common law trademark records are not freely available on the Internet, the cost of full trademark search and report is roughly five to ten times greater than a knockout search.

For any new trademark applications, the identification of goods and services should be stated as broadly as possible while still allowing for possible narrowing of the "ID" during examination, if necessary. In this regard, the U.S. Patent and Trademark Office has published an "Acceptable Identification of Goods and Services Manual that contains identifications of goods and services and their classifications that are acceptable in the Office without further inquiry by an examining attorney. Using identification language from the Manual enables trademark owners to avoid objections by examining attorneys concerning indefinite identifications of goods or services.

With respect to enforcing your trademark rights, for imported infringing goods, including counterfeits and gray market parallel imports, it is possible to obtain enforcement assistance from the U.S. Customs Service. The fee for recordation of the trademark with Customs is significantly less than engaging in litigation with importing infringers, and goods may be seized at the border before actual harm can occur in the U.S. marketplace. However, Customs will generally need to know where the goods are going to enter the U.S. in order to provide effective intervention.

With regard to Internet domain name registrations, consider obtaining domain names corresponding to each head of the brand family in at least the ".com" domain. Other defensive domain name registrations may also be worth considering for at least these names in other top-level domains, such as .net, .biz, and .info, and in each of the two-letter, top-level country code domains where your company has significant market share or plans for expansion. Internationalized domain names have also recently become available for non-ASCII characters, including Japanese and Chinese scripts. Top-level domain names that contain other formatives of your trademarks can also be searched at

From a domain name management perspective, some of your domain name registrations may have already been obtained by what appear to be "cybersquatters" with no interest in the underlying trademark corresponding to these names. Other of your registrations may have recently expired and been re-registered by what appear to be "cybersnatchers" looking for short-term, speculative profits from the resale of those registrations. In addition there are some domains names that are likely to be in legitimate use, but for which you may still be able to negotiate a purchase. There are various options for recovering, registering, and managing these domain name registrations.

For example, for domain name records that are expiring within one year, we have checked to see whether those names are available on the Internet Corporation for Assigned Names and Numbers' ("ICANN's") new wait-listing service that has been approved for implementation by Verisign in connection with ".com" and ".net" domains. Although this new service must still be approved by the U.S. Department of Commerce, Verisign is continuing to offer "Pre-Orders" for its "Next Registration Rights" service at $39 per year, per domain name. Only one backorder is allowed for each domain name and the current backorders are searchable by the public.

The wait-listing service was devised because it is often difficult to determine exactly when an expired domain name registration will "drop" and become available to the public. While monitoring and backorder services such as SnapNames, DomainsBot, and ExpiredTraffic are available, they are reported to be only about 70% successful. If, as some expect, the service is approved by the U.S. government, then the wait listed party will automatically receive a 1-year registration (included in the yearly subscription fee) only if the domain name becomes available during the subscription. Therefore, wait-listing may be an adequate short term procedure for cybersquatted registrations of less-important domain names.

Of course, cybersquatters can also check to see if their domain names have been placed on the wait list in order to determine whether there is sufficient interest in a particular name to justify renewing the registration. Other domain names may simply be too important to wait for their expiration. For these domains, it may be necessary to initiate a Uniform Domain Name Dispute Resolution Procedure ("UDRP") or file a lawsuit under the Anti-Cybersquatting Consumer Protection Act ("ACPA").

The UDRP is a mandatory arbitration procedure set forth in the contractual agreement between all registrants and their ICANN-accredited registrars. To prevail under the UDRP, the complainant trademark owner must generally establish that the they have trademark rights in the mark at issue, and that the domain name was registered and is being used in "bad faith." Transfer of the domain name to the prevailing party is the only available relief; monetary relief is not available. Filing and prosecuting a UDRP proceeding is relatively inexpensive because there is no discovery, briefing, or oral argument; and panels try to issue their rulings in about 45 to 60 days. However, a losing domain name registrant can "appeal" the panels decision by filing a declaratory judgment action at any point during the proceeding (or within 10 days of an unfavorable ruling) seeking a declaration of non-infringement.

ACPA lawsuits are aimed at people who register a domain name with the intention of taking financial advantage of another's trademark and generally apply to those who: (1) have a bad faith intent to profit from a domain name; (2) register, use or traffic in a domain name; and (3) that is identical, confusingly similar, or dilutive of certain trademarks. Since these lawsuits must generally be filed in the judicial district where domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located, they are not often used with foreign registrars. In fact, letters threatening such litigation often cause cybersquatters to move their registrations offshore where they are more difficult to track down. However, the ACPA provides for statutory damage awards between $1,000 and $100,000 per domain name, as well as forced transfer of the domain name. But, due to the nature of the judicial process in the U.S., they are generally slower and more expensive than UDRP proceedings.

In order to minimize the possibility of any further domain name losses, trademark owners should consider changing the administrative contact for all of their existing domain name registrations to a blind address in its corporate intellectual property department, such as, and then have messages to that address forwarded to the current administrator. This arrangement may help to prevent loss of renewal rights when an e-mail address goes dead because an employee leaves the company. A trademark "abuse" email address and/or reporting hotline can also encourage customers and distributors to let you know about problems on the Internet.

Finally, trademark owners should consider transferring all of their domain names to a single registrar with automatic renewal and transfer prevention services. Various service providers, including MasterData Center (partnering with "MarkMonitor") and Verisign, also offer a smorgasbord of digital brand management services including domain name registration, recovery, automatic renewal, locking, synchronization of expiration dates, access portal software, and status reporting. Of course, most law firms can also provide similar services.

For more information on trademark portfolio management and auditing strategies, and other I/P management issues, contact Bill Heinze (, at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA or subscribe to the free "I/P Updates" news service at
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