Trademarks, Domain Names & Advertising

August 18, 2019

This section of the SLW Institute discusses the guidelines for selection and use of trademarks and domain names.

The ability of a company to obtain strong and defensible trademarks and domain names, and avoid infringement of other parties’ trademarks, is of great importance to building its brands. It is important that all trademarks and domain names adopted for use by a company will be carefully selected, cleared for use, registered and used appropriately to maintain their value to a Company.

Trademarks, Domain Names & Advertising – Topics

Responsibilities of the Trademark Coordinator
Trademark & Domain Name Database
Trademarks & Domain Name Monitoring
Review Use of Third Party Trademarks
Review Use of Comparative Advertising
Clearance & Use of Company Trademark
Trademark & Domain Name Registration/Protection
Domain Name Selection
Trademark Selection

Responsibilities of the Trademark Coordinator

The responsibilities of the trademark coordinator can include:

• Liaison with outside IP counsel regarding administrative matters.
• Presenting substantive incidents to the trademark manager and company legal for decision and response.
• Coordinating decisions on payment of trademark renewals.
• Managing and ensuring proper trademark usage, marking, and notice requirements.
• Managing trademark and domain name watching and reporting violations of company trademarks/domain names to company legal
• Managing internet monitoring of trademarks, domain names, metatags and other internet-based considerations.

Trademark & Domain Name Database

The trademark coordinator and/or outside IP counsel can maintain an internal database of company trademarks and domain names. The database can include:

• Records of trademark searches and opinions
• Applications for trademark registrations
• Registered trademarks and correspondence
• Domain name registrations
• Relevant correspondence

Trademarks & Domain Name Monitoring

Part of the value of trademarks and service marks comes from their exclusivity and the fact that others cannot use confusingly similar marks on related goods or services. In order to preserve these rights, it’s important to monitor the activities of others to make sure the marks they use are suitably differentiated. This can be done by watching for the use of similar marks by competitors or by utilizing a “clipping service.”

A “trademark watching” service and periodic trademark searches to monitor the state of the trademark register is advisable for important marks. This may include searching on the Internet. If competitors or others are using confusingly similar trademarks, it may be essential to take action to prevent infringement and the possible narrowing of the company’s rights.

The trademark coordinator of your company should work with outside IP counsel to arrange for and conduct trademark and domain name watching with the following steps in mind:

• Identify your company’s strategic trademarks to be monitored. These should at least include key brand names and other marks that have heightened value in their ability to identify company products.
• Communicate the identified trademarks to the outside IP counsel.
• Together with your outside IP counsel, determine an appropriate scope of monitoring for the identified marks. Identify the markets, geographic regions, and key competitors.
• Receive reports from yout outside IP counsel on a periodic basis for review

As needed, your company will be able to engage in trademark or domain name enforcement actions. Accordingly, any suspected violations of your company’s trademarks or domain names should be brought to the attention of your legal team immediately.

Note: A failure to police and protect company trademarks can have a negative impact on the future enforceability of those trademark rights.

Review Use of Third Party Trademarks

It is important to properly use these marks properly and give appropriate acknowledgement of ownership. The owner of the trademark may have additional requirements – be sure to review their policies for use of their marks if available (generally published on a webpage). For further recomendations, see the materials within the guidlines of this section.

Review Use of Comparative Advertising

Examples of comparative advertising include:

• Product or service characteristics
• Value
• Performance
• Consumer preference
• Market share
• Sales origin
• Availability

The comparison must be a fair and factual comparison of similar properties, features, ingredients, benefits or performance between one product or service and one or more other products or services. An advertisement must not create an unsupportable negative general impression of the compared-to product or service beyond the factual comparison being made. In the US, comparisons must follow the FTC rule which requires advance scientifically verifiable proof of the claim’s validity.

All comparative advertising should be approved by your company’s legal department.  See our proposed guidelines for further considerations.

Clearance & Use of Company Trademark

Clearance

Timing is important. Trademark or domain name clearance should be undertaken as early as possible prior to use of the mark. This means before marketing material is printed (or designed) and before the mark is incorporated into product designs. There are two primary scenarios where clearance can be necessary:

1. When a product is in development which is intended to be identified by a new mark.
2. When an existing mark being used in one market segment is moved or expanded into a different market segment.

The basic procedure for clearance includes the following steps:

• Company personnel seeking to adopt a new trademark or domain name (the “Initiator”) should contact the trademark coordinator, who can provide initial guidance and instructions.
• Where the Initiator is inexperienced in trademark or domain name generation and selection, he or she should be counseled by company legal on the requirements and goals of trademark generation and selection.
• Before any mark or domain name is approved for use, the mark or domain name should be cleared by company legal. For further instruction, see the guidlines within this section.
• If a mark or domain name is cleared for use, and the initiator wishes to proceed with using the trademark or domain name, the trademark coordinator can initiate the process of registering the trademark or domain name and any corresponding domain names in the US and foreign jurisdictions of interest. In some cases, it may be advisable to reserve candidate domain names prior to the completion of the trademark clearance process. Often times, a domain that is identical to the trademark will not be available. It is important to consider other domain options, such as a domain that includes a descriptive term as a suffix.
• Before final approval for use, the trademark coordinator should consider completing a Trademark Clearance Checklist and/or Domain Name Clearance Checklist to assure all necessary steps have been performed, including filing for registration of the mark.

Use

Your company’s brands, marks, names, and logos are important and valuable assets. Improper use of such trademarks may devalue or otherwise harm the asset. Additionally, improper use of competitor or other third party trademarks can subject the company to liability. When creating material to be published or shared outside of the company, it is important to ensure proper use of both company and third party marks. The trademark manager should be responsible for assuring proper use of all company trademarks and should take into consideration the guidelines within this section 

Trademark & Domain Name Registration/Protection

All strategic trademarks and domain names should be registered in all jurisdictions they are used in. To avoid poaching of company trademarks in foreign jurisdictions, any such registrations should be initiated prior to use of the mark or domain name in any respective jurisdiction.

The basic procedure for registration of trademarks include the following steps, which can be coordinated through your company’s legal department.

• Estimates of the filing costs for the desired trademark and domain name registrations can be obtained from outside IP counsel. Examination costs, subsequent to filing, are normally not included as they are variable.
  
• Internal sign off for the registration expenditures can be obtained from the owner of the trademark or domain name budget.
• After approval of the estimate, the outside IP counsel should be instructed to initiate the filing for registration of the desired trademarks and domain names.
  
• The trademark coordinator should update the company trademark and domain name database to reflect the application for registration.
  
• The trademark coordinator should work with the outside IP counsel to complete the registrations, and update the database as the registration(s) progress.

Domain Name Selection

Trademarks always take precedence when selecting a domain name and if a domain name is in conflict with a trademark, the owner of the trademark will normally be able to acquire ownership of the domain name. The primary goals of domain name selection are:

• Selection of a domain name that is protected by a defensible trademark right owned by the company.
• Selection of a domain name that allow for securing of any necessary corresponding international domain names.
• Ability to acquire/register the domain in the US and foreign countries of interest.
• Choice of a domain name that translates well into foreign languages of interest.

All domain names used by used by a company should take into consideration the selection and clearance process in accordance with the guidelines related to this section. No domain selection should be considered useable until it has been cleared by a search. Foreign domains rights should be considered for brands which will be used overseas.

Trademark Selection

All trademarks used by a company should take into consideration a selection and clearance process in accordance with the guidelines related to this section.  These guidelines are designed to ensure that the trademarks selected or adopted by a company can be used free of infringement, registered, and enforced in all jurisdictions of importance. Critical elements of trademark selection and clearance include:

• Selection of a strong trademark that will provide for strong branding and the opportunity for strong trademark exclusivity.
• Selection of trademarks that allow for securing of any necessary corresponding domain names, both in the US and internationally.
• Ability to federally register the trademark in the US and foreign countries of interest.
• Ability to use the trademark in the US and foreign countries of interest (note – just because the mark is registered does not mean it is necessarily free to be used).
• Choice of a trademark that translates well into foreign languages of interest.