Trademark Tips: Seven Experts Share Their Secrets

A collection of advice from leading trademark attorneys, including James R. Davis II, Christina Frangiosa, Ashly I. Boesche, Marina A. Lewis, Candace L. Moon, Stacy A. Hostetter and Susan E. McGahan.

©2015. Published in Landslide, Vol. 7, No. 5, May/June 2015, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

In preparing the e-commerce issue of Landslide® magazine, we considered the value of trademarks and the extent to which they are violated on social media platforms, shopping websites, domains, etc. There seem to be unlimited ways that trademarks can be used online, and these uses are multiplying as new top-level domains are established and innovative platforms develop.

IP attorneys are constantly challenged to embrace new technologies and ensure that clients’ rights are protected and enforced globally. In light of these developments, seven lawyers with experience representing clients in various industries share their comments and tips on effectively enforcing trademark rights online.

E-Commerce Websites

Marina A. Lewis is an attorney in the Palo Alto, California office of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, with a practice focused on trademark, domain name, and Internet law. She counsels clients on a broad range of Internet and cyber law issues, including online brand enforcement, RP proceedings, and anti-cybersquatting procedures.

Let’s face it—we Americans love shopping online. The U.S. Census Bureau reports1 that almost one out every 10 products sold in the United States is purchased through an online retail channel. In fact, online sales have become such an important part of how we make our purchasing decisions that a recent Nielsen study2 suggested that “Black Friday”—our traditional start of the holiday shopping season—is slowly being eclipsed by its cyber-counterpart, “Black Monday,” as more and more Americans now prefer shopping in the comfort of home to fighting the mall crowds.

Unfortunately, the rise in popularity of online retail also means an increased availability of infringing or counterfeit products, many of vastly inferior quality. Sadly, the widespread availability of counterfeits not only tarnishes a trademark owner’s valuable brand equity, but in some cases poses a serious threat to public safety. The National Crime Prevention Council estimates3 that over 10 percent of all pharmaceutical products sold worldwide are counterfeit—many through online channels—and can include inert, toxic, or even deadly ingredients. Other poor-quality counterfeits (e.g., automotive lights, baby food, etc.) pose an equally serious public health concern. This makes it even more critical that brand owners get out in front of this problem.

The good news is that many online merchants have developed powerful tools to equip brand owners in combatting counterfeits in the digital marketplace. Almost all major e-commerce sites (including the online channels of major retailers like Target and Best Buy) provide streamlined reporting tools that both brand owners and the public can use to report suspected counterfeits. In addition, many large-scale e-commerce sites like eBay and Alibaba offer structured programs to brand owners who are frequent targets of counterfeiting. Owners who register and verify their intellectual property rights with the site on a one-time basis can then make multiple reports of counterfeits on a regular basis, without needing to resubmit proof of their rights with each reporting instance. Examples include eBay’s Verified Rights Owner (VeRO) program and Amazon’s Intellectual Property Rights (IPR) protection program.

There are some practical tips to keep in mind in order to maximize the benefit of these programs. First of all, if the e-commerce site offers an online reporting form, use it—you will get a much faster response than with a traditional cease and desist letter or takedown notice. Second, make sure your complaint is complete. Failure to provide all the information requested by the online merchant is the most common reason infringement reports are ignored or rejected. In addition, brand owners will see more much more success if they implement a consistent and proactive approach to online enforcement. This can mean designating a specific person within the organization to conduct regular sweeps of e-commerce sites where counterfeiters are known to lurk. Brand owners should also familiarize themselves with an online merchant’s ever-changing terms of use. Many online merchants offer ways to partner with brand owners and law enforcement to reign in particularly stubborn counterfeiters. E-commerce outfits can provide vital information to help locate counterfeiters, such as bank accounts, and place or country of origin. Armed with this information, brand owners greatly increase their ability to identify the source of the counterfeit. Knowing where to implement effective seizure orders makes it much more likely to cut off the flow of knockoffs at their source—essentially stopping counterfeiters in their tracks.

With the popularity of online retail only looking to increase, it’s probably safe to say that online shopping—and counterfeiting—is here to stay. However, brand owners who strategize their efforts and resources to aggressively target counterfeiters can ultimately stay on top of this online menace.

Global Trademark Strategy

Ashly I. Boesche is a partner at Pattishall, McAuliffe in Chicago with extensive trademark, copyright and domain name experience in all facets of non-patent intellectual property law.

Trademark owners should take a global perspective when protecting their brands. Whether advertising their products or services online or manufacturing products in a foreign country, trademark owners should not only consider seeking trademark protection in their key markets, but also in countries where infringement runs rampant and relief may be difficult to come by.

Unlike the United States where trademark rights are obtained through use, several other major economic markets are civil code or “first to file” countries. In these jurisdictions, trademark rights do not commence with use, but rather are granted to the first person or entity to file a trademark application or obtain a trademark registration. It is quite common for a trademark owner to learn either when it files for protection itself, or when its goods have been seized at a border, that another unrelated party owns rights to its mark. It can be difficult to enforce against these infringers, particularly because many civil code countries require that a trademark owner show that its mark is well-known or famous in order to obtain rights in a mark that another party registered. While at times a trademark owner can rely on the fame of its mark outside of the problem jurisdiction, it may be impossible to reclaim rights for startup companies and new products. Infringers are aware that laws in some jurisdictions favor them and will attempt to sell rights back to the trademark owner, usually at exorbitant prices. It is important for trademark owners to consider expansion early and take defensive measures in key economic markets.

Use Marks Consistently in Point-of-Sale Websites

Christina D. Frangiosa is an attorney with Semanoff Ormsby Greenberg & Torchia, LLC, in Huntingdon Valley, PA, who concentrates her practice on trademarks, copyrights, technology and data security law.

A U.S. trademark owner seeking to register its brand name (mark) with the U.S. Patent and Trademark Office (USPTO) must demonstrate “use in commerce” before the USPTO will accept its application and register the mark. This is accomplished by providing the USPTO with “specimens” showing how the mark appears in connection with the goods or services, among other application requirements.

Point-of-sale websites can demonstrate a “use in commerce” just as much as physical in-store displays, product packaging, or trade show displays, provided that these websites offer consumers an ability to purchase the product from that page. As a result, these website pages need to be designed just as consistently, with as much careful attention to detail, as any physical sales display or product packaging would be.

While revisions to these websites do not require submission of a “printer’s proof” to any manufacturing company to print and/or assemble the final displays, applicants must still be sure that any logo, tagline, or special wording used on point-of-sale websites appears uniformly, without variations (however slight) that could detract from the value of the mark and its overall commercial impression.

This consistency aids the application process in providing alternate potential specimens to support a trademark application, but also serves to identify a clear, unchanging message to consumers to enhance their recognition and recollection of the applicant’s brand, and thus should not be overlooked due to the websites’ immediately modifiable format.

Domain Names

Jim Davis is an IP partner at Arent Fox in the Washington, DC office, who counsels clients in a wide range of issues, with a particular specialty in online enforcement of IP rights.

As most trademark owners know too well, the Internet Corporation for Assigned Names and Numbers (ICANN) is in the process of launching hundreds of new generic top-level domains (gTLDs) to challenge the historic dominance of .com, .net, and .org. The preliminary data show clearly that cybersquatters are seizing on this opportunity to register infringing domain names in the new digital space. Savvy trademark owners need to be proactive and protect their brands during this gTLD expansion and beyond. For starters, companies should record their primary registered marks in the Trademark Clearinghouse, take advantage of sunrise periods to register domain names before the gTLDs open to the general public, and use monitoring services to identify potentially infringing domain name registrations. If an infringing domain name is identified but a resolution cannot be reached with the cybersquatter, trademark owners still have various legal options, including filing Uniform Domain-Name Dispute Resolution Policy (UDRP) or Uniform Rapid Suspension System (URS) disputes, or lawsuits.

Social Media

Social media is no longer just a popular way to keep in touch with your friends and colleagues. More and more it is becoming an inexpensive and convenient way for infringers to confuse and mislead consumers. Infringers are creating accounts with Pinterest, Twitter, Facebook, YouTube, and other social media sites to promote infringing products and services. In many instances, those account names include third-party trademarks; in other cases, the social media content itself is the problem. Most social media providers have notice and takedown procedures that allow trademark owners to file fairly informal online objections. Companies, especially those with a social media presence, should carefully monitor how their brands are used by third parties on social media. Trademark owners that are familiar with the various notice and takedown policies and procedures will be in a position to expeditiously file complaints with the hosts and providers.

Trademarks in the Craft Beer Community

Candace Moon is the founder of The Craft Beer Attorney, APC in San Diego, CA, specializing in the legal issues faced by craft breweries. Stacy Hostetter, a University of San Diego School of Law student, currently works for the Craft Beer Attorney.

Trademarks have been a hot button issue in the craft beer industry lately. There are more and more craft breweries opening every month across the country, but only so many plays to be had on the word “hop.” While the fight for distinctive branding and first use is the same in beer as it is in other industries, one element has traditionally set craft beer apart: community. It may well be the collaborative aspect of the beer world—whether it be through recipe sharing or support in the taproom—that has allowed for such impressive growth in the industry. As the scene becomes ever more crowded, however, the collaborative community has taken a few hits and trademark disputes have frequently been the epicenter of such controversies.

Many of the trademark disputes are entirely valid—a similar mark or design is being used on similar products. The mutual love of craft beer allows for a good deal of peaceful coexistence though. It is important to remember the industry before jumping to a standard cease and desist. As lawyers, we certainly cannot call up a brewer and educate him or her on how a particular brand violates our client’s trademark, but our client can. A lot can be accomplished when two beer loving people sit down over a beer with an idea of solving an issue rather than bullying the competition.

Even if a cease and desist letter is required, the standard legal recitations should likely be set aside for the first attempt. In our experience, a softer tactic has proven far more successful. This is likely partly because of the proven force of social media. A cease and desist letter sent to a brewery is very likely to end up splashed across the relevant consumer blogs. Recent debacles have led entire swaths of customers to swear off ever buying from a particular brewery again because of trademark demands that seemed unreasonable to the community. The community of craft beer may be going through growing pains, but lawyers would be well advised to keep the tradition of collaboration in mind when drafting their correspondence.

Online Enforcement Efforts of Famous Domain Names

Susan McGahan is an attorney in the IP Legal Department of AT&T in Bedminster, NJ who specializes in all aspects of IP licensing transactions and trademark enforcement.

As most trademark owners know too well, enforcing the unauthorized use of your company’s brand for .com, .net, and .org can be daunting, and that’s even before the launch of the new generic top-level domain names. To keep up with the pace of cybersquatters, in-house trademark lawyers need all the arsenal they can assembly to fight off these unauthorized users. One tool that I find helpful in uncovering masked registrants is a free service offered by CentralOps.net located at www.domainwhitepages.com. Here you can easily investigate domains and IP addresses as an anonymous user to get registrant information, DNS records, domain whois records, DNS records, and traceroutes—all in one report. This domain dossier reveals valuable information on the domains and IP addresses and host servers that can assist you in shutting down the cybersquatters’ infringing domain names.

So when your cease and desist letter goes unanswered, send that letter to the OrgAbuseEmail listed under the Network Whois record of www.domainwhitepages.com, after searching the offending domain name. I have been quite successful in having the host server promptly respond with something to the effect of “we have suspended the domain name and its associated hosting services from our end.” It is especially helpful when the registrant is located outside the United States.


1. Quarterly Retail E-Commerce Sales: 4th Quarter 2014, U.S. Census Bureau (Feb. 17, 2015), http://www.census.gov/retail/mrts/www/data/pdf/ec_current.pdf.

2. Pass the Turkey and the Car Keys: Retailers Brace for Black Friday and Cyber Monday, Nielsen Newswire (Nov. 18, 2014), http://www.nielsen.com/us/en/insights/news/2014/pass-the-turkey-and-the-car-keys-retailers-brace-for-black-friday-and-cyber-monday.html.

3. Intellectual Property Theft: Get Real—Fake Drugs Are Bad Medicine, Nat’l Crime Prevention Council