I N S I D E
T H E
M I N D S
Recent Trends in
Trademark Protection
Leading Lawyers on Educating Clients,
Understanding the Impact of Technology,
and Navigating the Current Marketplace
2012 EDITION
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Aligning Trademark Strategy
to Meet the Challenges of the
Internet and Social Media
Robert J. Kenney
Senior Partner
Birch Stewart Kolasch & Birch LLP
By Robert J. Kenney
Introduction
The largest growth areas for my practice over the course of my career have
been in relation to consumer electronics and appliances and household
products. In recent years, however, the demographic has changed in the
number and nature of clients involved in web hosting, social media,
webinars, and entertainment, as well as in pharmaceutical trademark clients.
This is an indication of today’s trend of an increased number of clients
becoming involved in protecting their trademark rights as part of building
strong brands. When considering trademark and brand protection,
specifically areas such as domain name and Internet-related issues and social
media issues as they impact upon consumer electronics, pharmaceutical and
entertainment-related trademarks have seen the most growth. These clearly
track the shift and growth of consumer e-purchasing and consumer
networking activity, as well as a growing concern for health issues. Because
trademarks are designed to touch and influence consumer attitudes,
feelings, and activities, they closely follow (or sometimes lead) the growth
of consumer interest and purchasing behavior.
The Effects on Daily Practice
Today’s trends require me to spend more time staying current on the latest
developments in e-commerce and social networking, and understanding the
goals of clients as they make greater use of the Internet and various social
media sites as integral to their business, so that I can counsel them on the
best course of protection. I have also found the need to educate myself on
the Food and Drug Administration trademark clearance process, which
aligns closely with regular US Patent and Trademark Office (PTO)
trademark registration procedures.
Recent Trends and Developments in Trademark Protection
The trademark area of intellectual property (IP) is experiencing a greater
focus on branding and brand management, which move beyond just the
application and protection of a trademark or service mark to focus more on
building a positive perception of a product or service and create a
personality. In many ways, the growth of social media has facilitated this
trend because companies are able to communicate with their customers and
Aligning Trademark Strategy…
prospective customers personally through various social media websites
such as Facebook and Twitter. Companies such as Target and the Home
Depot have used Facebook to reach customers on a personal level. GAP
uses Twitter to offer exclusive deals and promotions to more than 75,000
followers. It is estimated that 80 percent of Fortune Global 100 companies
use some form of social media.
Companies such as Subway and MTV are using other social media such as
LinkedIn and MySpace, and more social media outlets are emerging,
including the recent launch of Google+. Trademark owners can also use
media content-sharing websites such as YouTube and Flickr, which allow
users to share videos or photos, invite customers to post positive videos or
photos, or conduct contests for their customers. For example, the television
show “The X Factor” used YouTube to conduct online auditions for the
show. Brand owners can post photos on Flickr showing sponsored events,
sweepstakes, or product placement in movies. In addition, blogs and
blogging platforms such as Blogger, WordPress, and Tumblr are outlets for
commentary that can affect trademark rights if a fan or supporter promotes
a trademark owner’s marks, and can harm trademark rights if a third-party
blogger or critic misuses them. Finally, brand owners need to be aware of
the use of their marks on information networks such as Wikipedia, and take
steps to correct improper use or inaccurate information.
Part of the challenge of the increased use of social media for the trademark
owner is combating the Internet (or “millennial”) generation’s perception that
information and invention should be free for anyone to use. Certainly, many
people over the age of forty would not agree with a twenty-year-old regarding
how the Napster case should have been decided. The challenge for a trademark
owner is to balance the benefits of social media in reaching customers at a
personal level with the risks associated with the generational perception that
everything in social media should be free for any use by anyone.
There also continues to be a focus on domain name issues as they affect
trademark owners. Now that there is an extensive catalog of arbitration
decisions under the Internet Corporation for Assigned Names and Numbers’
Uniform Domain Name Dispute Resolution Policy, the case law seems to be
evolving. This is especially true with respect to what constitutes the “bad
faith” of a party who registers a domain name that is similar to another
party’s trademark, and seems to be trending in favor of trademark owners.
By Robert J. Kenney
Recent Trends’ Effects on Lawyers
Due to the recent trends in trademark and brand protection, trademark
attorneys must be much more aware of the ways the various social media
websites work to understand where clients will experience problems and
how to correct them. Most social media sites have “take-down” or
complaint procedures through which a trademark owner can file a
complaint regarding the improper or unauthorized use of a mark on the
site. Lawyers advising clients must be familiar with those procedures and be
prepared to take quick action for clients. In addition, IP law practitioners
should advise clients of the need to continuously search social networking
sites and the Internet for references to their brands and trademarks to know
when to take the appropriate steps to correct misuse. Finally, IP law
practitioners must be familiar with the ways clients’ marks can be infringed
upon or misused in search engine formats by competitors and how the
competitor’s purchase of trademarks as keywords can adversely affect the
notoriety of a mark and the flow of traffic to the trademark owner’s
website. Procedures for countering these actions are limited, and the case
law is still evolving. However, search engine providers such as Google and
Yahoo! have not yet been found liable for infringement for selling
trademarks as keywords to third parties.
Recent Trends’ Effects on Clients
As social media sites continue to emerge, clients need to be aware that
improper uses of a trademark in social media can take several forms. For
example, “brand-jacking” is a form of trademark abuse where fake profiles
are created on a site in the name of a brand owner. This recently occurred
when someone created a fake account on Twitter, posing as
“ExxonMobileCorp” to answer questions about the company. Exxon
Mobile had to take steps to later make it clear that the account was
unauthorized and not truly connected to Exxon Mobile. Trademark abuse
may also occur in the form of “fan” sites, which have their own specific set
of problems. On the one hand, fan sites can be free, positive publicity for a
brand, but on the other hand, since they are not controlled by the brand
owner, they can contain misleading information or misuse of trademarks or
service marks. Some companies, such as Coca-Cola, have approached this
problem by actively participating in fan sites related to their products.
Aligning Trademark Strategy…
The sheer volume of potential issues in social media—about 1 billion
Tweets are sent weekly—and the speed at which social media operates
demand rapid decision-making and action by the trademark owner.
Therefore, the most important thing for the trademark owner is to be
prepared with a nimble social media policy for the company, its employees,
and third parties and to prioritize and act on matters that require response
and those that do not, and to act quickly. That policy must include a
willingness to accept that not every tweet or mention of the brand on
Facebook or Google+ requires response.
Also, because of the viral nature of social media and the Internet, a new or
existing product’s notoriety or promotion through a new advertising
campaign can explode exponentially. The obvious benefit for the trademark
owner in that case is that the product or service is in high demand by eager
consumers, but there is also the risk that the trademark is so widely and
quickly used by the public that it becomes the common name for the type of
goods, rather than continuing to function as a brand identifier of a product or
service coming from a particular source. This is known as “genericide,” and a
good example is the brand “Rollerblade®.” The use of the terms
“rollerblading” or “rollerblades” in social media is virtually impossible for the
Rollerblade company to control, given the nature of social networking sites
and the incredible volume of content that is also difficult to effectively search.
Because Rollerblade cannot control the use of their brand, the company
cannot take action against every online use of the terms “rollerblade” or
“rollerblading.” Rollerblade has, incidentally, taken the types of steps
necessary to police the proper use of its mark. Similarly, Google recently
devised a media campaign in response to an assertion by the Washington Post
that its name had become generic. Clients must be aware of the risk of
“genericide” when they launch online campaigns that might go viral.
Informing Clients of Current Trends in Trademark Protection
Obviously, it is extremely important to keep clients informed of the
constant changes in IP law and trademark protection. Our firm provides
unique annual training programs for clients and prospective clients in our
offices, including a one-week US trademark practice seminar in the spring.
We ensure that the materials for the seminar are current to provide clients
and prospective clients with recent, relevant information. We also
By Robert J. Kenney
commonly visit clients and provide abbreviated lectures on the topics that
are most important to their businesses.
Useful Resources for Identifying Trends in Trademark Protection
I use several resources to identify trends in trademark protection. I
frequently review such publications as the International Trademark
Association’s The Trademark Reporter, Thomson West’s Federal Case News,
and IP Litigator magazine. These publications help me monitor new
decisions impacting trademark law. The International Trademark
Association’s INTA Bulletin also provides regular insight into recent
decisions both in the United States and abroad. As a member of Marques,
the Association of European Trade Mark Owners, I also review e-mail
discussion topics circulated to members to get current insight from other
trademark practitioners on new issues. In addition, I have attended the
International Trademark Association annual meeting since 1992 and either
the European Communities Trade Mark Association meeting or the
Marques Conference in Europe every year since 1993.
Recent Trends in Trademark Litigation
Recent cases in trademark litigation have affected many significant areas of
trademark protection, including the use and protection of marks in social
media, liability for web hosting infringement or counterfeit products, and
liability for purchase of trademarks for keyword advertising in search engines.
Web Hosts’ Trademark Infringement Liability
Trademark owners continue to search for ways to find online retail site hosts
liable for direct contributory trademark infringement as opposed to solely
pursuing the manufacturer of the goods. In Louis Vuitton Malletier, S.A. v.
Akanoc Solutions, Inc., 658 F.3d 936 (9th Cir. 2011), Akanoc, a web host based
in the United States, allowed some customers to advertise counterfeit goods,
including counterfeit Luis Vuitton goods. Louis Vuitton sent copyright and
trademark take-down notices to Akanoc, some of which Akanoc ignored.
Louis Vuitton then sued Akanoc for direct and contributory copyright and
trademark infringement, and the jury awarded Louis Vuitton more than a $32
million judgment. Louis Vuitton then moved for a permanent injunction and
Aligning Trademark Strategy…
Akanoc defended. The court found that “posting photos of counterfeit goods
by web hosts constitutes direct copyright infringement.” The court also
found that the fact that direct infringers were overseas was not a defense to
contributory copyright infringement.
Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc. seems to be the
exception rather than the norm. In most cases, such as Tiffany Inc. (NJ) Inc.
v. eBay, Inc., No. 04 Civ. 4607(RJS), 2010 WL 3733894 (S.D.N.Y. Sept. 13,
2010), the web host has not been found guilty of contributory infringement
where goods sold on the site were counterfeit, as long as the web host had
take-down procedures available to the trademark owner and did not know
or have reason to know a specific individual was selling counterfeit
merchandise. Therefore, for a trademark owner to succeed in proving a web
host is liable for infringement for hosting counterfeit goods on their
website, the trademark owner will continue to need strong evidence that the
web host knew or should have known the individual in question was selling
counterfeit merchandise.
Search Engine Providers’ Liability for the Sale of Trademarks as Keywords
Another evolving area of trademark litigation is the liability of search engine
providers for selling trademarks as keywords to the trademark owner’s
competitors. In Network Automation, Inc. v. Advanced Sys. Concepts, 638 F.3d
1137 (9th Cir. 2011), Network Automation purchased the “ActiveBatch”
trademark of Advanced Systems as a keyword on search engines, including
Google AdWords and Microsoft Bing. Both Network Automation and
Advanced Systems sell job scheduling and management software and
advertise on the Internet. Advanced Systems sent a cease-and-desist letter
to Automation Inc., who then brought a declaratory judgment action for
non-infringement. Advanced Systems filed counterclaims for trademark
infringement. The district court found a likelihood of success in the merits
with regard to “initial interest confusion” in favor of Advanced Systems,
and enjoined Network Automation’s purchase of “ActiveBatch.” The Ninth
Circuit then reversed the decision, finding that the district courts’ focus on
the “Internet trilogy” of similarity of the marks, relatedness of the goods or
services, and simultaneous use of the web as a marketing channel was too
rigid. Rather, the Ninth Circuit focused on a broader range of factors,
including the strength of the mark, evidence of actual confusion, type of
By Robert J. Kenney
goods, and degree of care exercised by the purchaser, and the appearance of
the advertisements and surrounding context on the screen displaying the
results page. After the district court’s decision in Network Automation, Inc. v.
Advanced Systems Concepts, Inc., but before the decision was overturned on
appeal by the Ninth Circuit, another case of keyword advertising came
before the same district court. In Binder v. Disability Group, Inc., 772 F. Supp.
2d 1172 (C.D. Cal. 2011), the plaintiff, a disability law firm, alleged
trademark infringement by virtue of the defendant’s purchase of its mark
“Binder and Binder” as a Google AdWord. The Binder court relied not only
upon the Internet trilogy, but also upon evidence of actual confusion
present at the trial in finding a likelihood of confusion based on actual
confusion. The court found that the plaintiff’s mark was strong, the parties’
services competed, and the defendant intentionally chose the plaintiff’s
mark based on its strength and market appeal. The court also found the
defendant’s conduct to be willful, and therefore doubled the damages
awarded and awarded attorneys’ fees. The Network Automation and Binder
cases leave the law open to interpretation as it relates to the issue of
purchasing a competitor’s trademarks as keywords.
Efforts to Protect Small Companies and Individuals
Public Law 111-146, 124 Stat. 66, which was signed on March 17, 2010,
with a report to Congress in April 2011, attempts to protect smaller
companies and individuals who own trademark rights from abuses in
litigation. The goal of that law is to address abuses in litigation, especially
where small businesses may be harmed by litigation tactics “the purpose of
which is to enforce trademark rights beyond a reasonable interpretation of
the scope of the rights granted to the trademark owner.” This was deemed
to be necessary mainly because the forms through which trademarks can be
exploited have changed and evolved over the years.
Recent Developments in Trademark Fraud
Decisions in the US Patent and Trademark Office (PTO) after Bose
Corporation v. Hexawave, Inc., 88 U.S.P.Q.2d 1332, 1338 (P.T.O. T.T.A.B.
2007), have continued to narrow the application of fraud, with M.C.I. Foods,
Inc. v. Brady Bunte, 96 U.S.P.T.2d 1544 (T.T.A.B. 2010), stating that it must
be proven “to the hilt,” and Factory Mutual Insurance Company and FM
Aligning Trademark Strategy…
Approvals, LLC v. Fullco Industries, Inc., Cancellation No. 92050758 (Dec. 17,
2010), finding that correcting a misstatement when it comes to light can
help rebut a charge of fraud. Despite the limitations that resulted from the
Bose decision, fraud remains a valid basis on which all or part of a trademark
registration can be cancelled. For example, in Fair Isaac Corp. v. Experian Info.
Solutions, Inc., 650 F.3d 1139 (8th Cir. 2011), the Court of Appeals for the
Eighth Circuit upheld the finding of the jury in the district court case that
Fair Isaac had, during prosecution of the trademark application, made
intentional false and material statements that were relied upon by the PTO
in issuing the registration. Applying the Bose standard, the Eighth Circuit
focused on two statements by Fair Isaac. In the first, Fair Isaac, in response
to the trademark examiner’s initial refusal to register the mark on
descriptiveness grounds, stated that it was the only party using the proposed
mark, “300-850,” as a “unique identifier.” The Eighth Circuit found that a
reasonable jury could have found this statement to be false because the
applicant was using the term only descriptively, not as a unique identifier.
Secondly, the court found that Fair Isaac’s employee was aware that Fair
Isaac and others “were using the same credit-score range, for the same
purpose,” and she knew Fair Isaac was not using the term as a trademark.
Consequences of Trademark Fraud
When a finding of fraud results in the inclusion of goods in a trademark
registration for which the mark is not being used, the typical consequence is the
removal of the goods for which use is not being made. In Fair Isaac, for
example, the result was cancellation of the registration fraudulently obtained.
Response to Recent Developments in Trademark Fraud
When responding to the developments in the area of trademark fraud, it is
essential for law practitioners to have full communications with clients
regarding the complete listing of the goods with which the mark is being
used. When issues such as filing a Section 8 declaration or Section 9 renewal
of the registration arise, the lawyer must clearly express to the client that
only those goods or services with which the mark is being used should be
included in the filing. Law practitioners should explain clearly all options,
such as the possibility of dividing the application when a statement of use
becomes due and the mark is being used on some but not all of the client’s
By Robert J. Kenney
goods. It is also important to make the client aware of the consequences of
overreaching on the description of goods or services, including the
exposure of the registration to attack by a third party. Finally, lawyers must
ensure that clients understand that non-use of the mark for a period of
more than three years constitutes prima facie evidence of abandonment.
Therefore, clients should monitor periods of non-use and make efforts to
avoid those lasting more than three years.
Recent Trends in Trademark Registration
One of the biggest challenges in the trademark registration process is
finding a description for goods and services that are so new technologically
that they do not have a “common commercial name,” which is normally
required by the PTO. Sometimes the client’s application is the first to
include such technology, and because the PTO requires a high degree of
specificity in the description, it becomes difficult to adequately describe
those previously undefined goods or services.
The most common complaint from clients is that the PTO is inconsistent
with its acceptance of the description of certain goods and services.
Whereas one or more examining attorneys will find a goods or services
description to be acceptable, another will refuse it and require more
specificity. Clients often do not understand the reasons for this, and
because the examining attorney’s common response is that every
application is examined on its own merits, it becomes difficult to explain to
clients why differing descriptions are needed for identical or highly similar
goods or services in two or more applications.
Recent Developments Involving the PTO
In October 2011, the PTO published the eighth edition of the Trademark
Manual of Examination Procedures. The PTO published highlights of the manual
on its website at www.uspto.gov/trademarks/notices/ TMEP_highlights.jsp.
It is worth noting that the revisions to the manual state that “if a consent
agreement makes representations about both parties’ beliefs regarding the
likelihood of confusion and/or indicates that both parties have agreed to
undertake certain actions to avoid confusion, then it should be signed by both
parties or by individuals with legal authority to bind the respective parties.” In
Aligning Trademark Strategy…
addition, the revisions state that “if only the registrant has provided its
consent, agreed to take certain actions, or made representations as to the
likelihood of confusion, the consent may be signed only by the registrant.
The absence of applicant’s signature on the document in such cases does not
necessarily render the document unacceptable, but, like any other consent
document, its persuasive value should be determined in light of all other
evidence in the record.” This suggests that it is possible that a consent
agreement that lacks the applicant’s signature may not be deemed sufficient
to overcome a likelihood for confusion refusal.
In addition, the manual, when exploring the subject of translation of nonEnglish wording, finds that “the requirement to translate applies to
compound word marks comprised of two or more distinct words (or words
and syllables) that are represented as one word, in which one or more of the
words in the mark appears to be non-English wording that would clearly be
perceived as a distinct word(s) within the compound. For example, if the
mark is ‘mañanacomputers,’ the commercial impression is that the mark is
comprised of the words ‘mañana’ and ‘computers.’ In that case, the
application must include a translation of the Spanish word ‘mañana,’ which
means ‘tomorrow’ in English. If the combination would be perceived as a
single word or conveys a different commercial impression than that the
mark is comprised of two separate words, no translation of the non-English
portion should be required. If the mark is ‘felizcity,’ the commercial
impression is that the mark is a play on the word ‘felicity’ and no translation
of the term ‘feliz’ (which means ‘happy’ in English) is required.” It does not
appear that these changes will have any significant impact on clients.
The Economy’s Effect on Trademark Law
From 2008 to mid-2010, the PTO experienced fewer trademark application
filings. The PTO’s Performance and Accountability Report for fiscal year 2011
shows the following application filing numbers:
•
•
•
•
•
FY 2007: 394,368
FY 2008: 401,392
FY 2009: 352,051
FY 2010: 368,939
FY 2011: 398,667
By Robert J. Kenney
The downward filing trend, which started at the end of 2008, seems to have
stabilized and even reversed. It is commonly suggested that the filings of
trademarks tend to track fairly closely to the stock markets, and this appears
to be consistent with the period of 2008 to the present.
Nevertheless, it appears that clients are still being careful to pursue the
more important applications and spend less time pursuing the protection of
a broad book of marks, some of which are less important to their
businesses. There also appears to be a trend of trademark applicants
abandoning a larger percentage of pending applications during 2009 and
2010 than in previous years. In most cases, these appear to be the relatively
less important marks that may have been filed before or at the beginning of
the economic downturn.
Improving Client Strategies
Recent trends and court decisions will affect our client strategies. Hopefully,
clients will understand the broad scope of media in which their trademark
and brand rights can be found and affected, as well as the importance of
providing accurate information to their lawyers and the PTO to avoid fraud
issues. We foster this understanding by visiting clients, as personal meetings
are the best way to convey the information clearly and completely. In
addition, my firm provides seminars both in-house and at the clients’ offices.
Common Client Concerns When Updating Strategies
Usually, a client’s main concerns when updating strategy are how long it will
take, who will be responsible, and how much it will cost. Corporate counsel
are often limited by budgets and staffing, and are therefore reluctant to
simply adopt everything the outside trademark counsel suggests to the
client. Because of this, IP law practitioners must be aware of the
importance of prioritizing their suggestions and offering any additional
assistance that will make it easier for the client to execute those suggestions.
Updating Strategy to Avoid Errors
Part of strategy to reduce effort and costs for corporate counsel is to avoid
as many problems as possible. I periodically offer clients a short lecture that
Aligning Trademark Strategy…
addresses a number of common pitfalls in protecting trademark rights. If
the law practitioner and the client can avoid those common problems, they
can effectively avoid approximately 90 percent of the problems we see
clients experiencing in relation to their trademarks. These include (1)
choosing strong marks that are not inherently descriptive, (2) conducting
searches before adopting new marks, (3) filing as early as possible by taking
advantage of the intent-to-use filing basis, (4) not listing goods or services
for which the mark is not being used or to be used, and (5) not allowing the
use of the mark to be discontinued for lengthy periods of time, especially
more than three years.
Addressing Client Needs Regarding Counterfeit Products
IP law practitioners should work closely with US Customs and Border
Protection (CBP) to register clients’ important trademarks. CBP provides a
relatively inexpensive check on counterfeit goods entering the US
marketplace. I have found CBP specialists to be helpful and professional in
assisting with counterfeit and suspected counterfeit goods, as long as the
trademark owner or the owner’s attorney is responsive.
For this purpose, it is helpful to obtain a copy of any existing brochure on
the proper use of the client’s mark and a list of authorized importers and
countries. These provide CBP officers with a quick reference in making
determinations regarding the authenticity of goods.
With respect to counterfeit goods found on e-commerce websites, it is
beneficial for the lawyer to be familiar with the specific website’s take-down
procedures, be able to file a complaint within the same day through the
proposed procedure, and provide formal, written notice to the web host
when a particular party sells counterfeit goods through that website. This is
necessary to preserve the right to pursue the web host if it fails to take action.
Ongoing Challenges
The coming year will likely bring ongoing challenges in relation to trademarks
in social media, counterfeit products sold on e-commerce sites, and Internetrelated trademark issues involving keyword advertising. The main challenge
will be for IP lawyers to keep abreast of the developments, as everything
By Robert J. Kenney
changes very rapidly. Additionally, the law relating to these areas will continue
to develop as trademark owners try to expand the legal basis available to
pursue infringement, especially contributory infringement theories.
Advice for IP Law Practitioners
Trademark lawyers will need to continue to understand how various ecommerce and social networking sites work to provide their clients with
effective advice on protecting trademark rights. At a minimum, the
trademark lawyer in 2011 should understand how search engine inquiries
return results that might include a client’s trademarks and how take-down
procedures can be used in various e-commerce and social media sites. He or
she should also have a working understanding of how various social media
sites work, and the elements a client should include in a social media policy
so the client can quickly address issues that arise in social media.
The trademark lawyer should also understand the procedures for trademark
registration and detention and seizure of counterfeit products through the
Department of Homeland Security US Customs Offices.
The increase in activity relating to pharmaceutical trademarks will also require
the trademark attorney to have a working understanding of the procedures
for Food and Drug Administration clearance of trademarks for use.
Conclusion
Practicing trademark law and assisting clients in protecting and
strengthening their important brands is a fast-changing field. Trademark
practitioners are perhaps more than ever required to keep abreast of not
just changes in the law, but rapid changes in technology and the effect those
changes have on brand owners. A trademark owner’s “brand message” is
no longer completely controlled by the owner, since social media sites are
fertile ground for unauthorized use of marks and brand owners simply
cannot address every such use. This, coupled with the significant attitude of
many social media users that everything should be free for use by everyone
presents significant challenges to the trademark owner and their counsel.
More than ever, planning ahead to address these issues is required of both
the trademark owner and its attorney. This will require constant
Aligning Trademark Strategy…
communication and understanding of the business of the trademark owner
and the ways trademark laws and company policies can be best used to
address these significant issues.
Key Takeaways
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Stay current on the latest developments in social networking, and
understand the goals of clients using various social media sites so
you can counsel them on the best course of protection.
Familiarize yourself with take-down procedures on social media
sites, and be prepared to take quick action for clients whose marks
are being improperly used. In addition, advise clients of the need to
continuously search social networking sites and the Internet for
references to their brands and trademarks to know when to take
the appropriate steps to correct misuse.
Recognize the ways clients’ marks can be infringed upon or
misused in search engine formats by competitors and how the
competition’s purchase of trademarks as keywords can adversely
affect the notoriety of a mark and the flow of traffic to the
trademark owner’s website.
Maintain full communications with clients regarding the complete
listing of the goods with which the mark is being used, as only
those goods or services with which the mark is being used should
be included when filing.
Work closely with CBP to register clients’ important trademarks, as
this provides a relatively inexpensive check on counterfeit goods
entering the US marketplace.
Related Resources
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Trademark Technical and Conforming Amendment Act of 2010,
Pub. L. 111-146, 124 Stat. 66
USPTO, www.uspto.gov/trademarks/notices/ TrademarkLitigation
Study.pdf
USPTO, www.uspto.gov/trademarks/index.jsp
USPTO, www.uspto.gov/about/stratplan/ar/2011/ USPTOFY
2011PAR.pdf
By Robert J. Kenney
•
•
USPTO, www.uspto.gov/dashboards/trademarks/main.dashxml
PharmPro, www.pharmpro.com/articles/2010/04/Navigating-theChallenges-of-US-Pharmaceutical-Trademark-Clearance-Research/
Robert J. Kenney is a senior partner with Birch Stewart Kolasch & Birch LLP. He has
practiced intellectual property law since 1987. His specialties include all aspects of
trademark practice, including portfolio management, client counseling, anti-counterfeiting
counseling, prosecution, inter partes matters, and litigation, as well as litigation of unfair
competition, patent, and copyright matters. He is the coordinator of the firm’s annual US
Trademark Practice Seminar. Additionally, he has lectured extensively throughout the
world on US trademark practice and intellectual property litigation in US courts and the
International Trade Commission.
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