The Wall Street Journal has an article entitled “Tool Traps Poachers of Web Names” in which they give a nice plug to BrandCrawler, a service from BulkRegister.  Last Thursday’s Journal mentioned GenuOne’s product (discussed here previously).  I’m of several minds (and have various conflicts) when discussing tools which allow for policing or searching names on the Internet..  In the Journal article, the first paragraph tells the success story of the National Guild of Hypnotists, which used BrandCrawler to discover www.nationalguildofhypnoists.com.  I thought to myself: “they needed someone else to find that one?”

The first generation of policing oriented spidering tools had their eye up to the wrong end of the telescope.  When searching a mark, you want every conceivable hit, but when you are policing a mark, you want only a manageable quantity of relevant hits.  You don’t want the chaff to obscure the wheat, and you don’t want to needlessly start the laches clock running by learning of a problem you don’t have the resources to deal with today.  Therefore raw spidering, which produces phone-book-sized reports of hits, wasn’t very useful (without someone taking the time to methodically review them).  The next generation, such as GenuOne, which uses its own heuristics to suggest relevancy, is a step in the right direction.

I haven’t tried out BrandCrawler so I can’t comment.  A competiting domain name watch product is CheckMark (disclosure – I know the owner) which I did try out and liked. CheckMark is good at handling typo-marks and also ccTLDs.  For DIY domain name policing you may consider periodically checking out DomainSurfer, which searches for the presence of a string anywhere in the domain name.

As to policing the presence of a term on the web content, I’m not sure the magic compromise between comprehensiveness and relevancy has yet been achieved.  It is tempting to put a term in DogPile and conclude that if a problematic website isn’t showing up in the top ten hits there that it isn’t worth worrying about (that, unfortuntely, is a fallacy).   Tools such as GenuOne go beyond merely finding a hit and comment on the content itself – for example it attempts to identify websites which might be selling unauthorized or grey market versions of a product.  However I believe that such products are not priced for small businesses as of yet.

There are many useful free or reasonably priced policing tools out there (like my poky domain dossier, best used during non-business hours), but the small to mid-sized business might not know they exist.  One thing I do with clients is ‘interview’ them as to how their brand is being used on the Internet, and then we come up with a mix of DIY and other services which either my crack staff or outside vendors provide.

Different types of policing tools, including pepper spray, here.

 

 

Initial Interest Confusion (IIC) is, imho, one of the key doctrines in the treatment of trademarks on the Internet.    If a user is diverted to a website through the unauthorized use of a trademark (in a domain name, meta-tag or some other method), but any confusion is dispelled prior to purchase, is that trademark infringment (or some other form of unfair competition)?  The Ninth and Seventh Circuits believe IIC exists in an Internet context.  Other courts dismiss it, believing that users are inured to winding up at the wrong place (and getting over it).

It is therefore frustrating when a partial record suggests that IIC could have been argued and evaluated.  Defendant had been selling plaintiff’s product on a webpage which included plaintiff’s mark in the pathname (the stuff after the top level domain in a URL).  When defendant switched products, it didn’t bother to change the webpage URL, so plaintiff’s mark remained (this is the page here by the way, which has been changed). Defendant’s page continued to appear in searches for plaintiff’s mark.  Plaintiff sued for trademark infringment.

The Sixth Circuit held that unauthorized use of a trademark in a pathname of a URL is not actionable, finding, quite sensibly, that use of (an unpromoted) URL is not trademark use.  It is possible to use a pathname as a trademark (some movie companies have, putting pathnames on posters), it’s just not practical, given that they tend to be long and ungainly. In any event, this defendant didnt use the URL as a trademark, it just used it as a URL.

This would have been an interesting case if it were shown that the existence of plaintiff’s trademark in defendant’s pathname diverted search engine traffic.  Then we might have had an initial interest confusion discussion.  However, as the very last footnote indicates:

IPC [plaintiff] also complains that a2z’s [Defendant’s] portable-computer-stand web page is listed as one of the hits when one does an Internet search for the term “laptraveler.” IPC’s own expert, however, testified that “the path name does not bias a search engine.” In addition, IPC has offered no proof that defendants did anything nefarious to cause search engines to hit a2z’s web page when searching for “laptraveler.” For instance, IPC does not present any evidence that defendants referenced “laptraveler” in the metatags of a2z’s portable-computer-stand web page. See Promatek Industries, Ltd. v. Equitrac Corp., 300 F.3d 808, 812-13 (7th Cir. 2002) (holding that the defendant’s reference to the plaintiff’s trademark in the metatags of the defendant’s web page was a violation of trademark law). The record does not contain any evidence that explains why a2z’s web page is hit when performing an Internet search for “laptraveler.”

And with that mystery unresolved, the case was dismissed.

Interactive Products v. a2z Mobile Office Solutions, No. 01-3590 (6th Cir. April 10, 2003).

Denise collects links on yogi’s behaving badly.  The founder of Bikram Yoga is attempting to enforce copyright in his style of yoga and trademark in his name.

New York Yankees great Yogi Berra was so named because he reminded a childhood friend of a yogi he had seen in a movie.

It is generally accepted that the Hanna-Barbera character YOGI BEAR is named after Yogi Berra and the Yogi Berra Learning Museum of New Jersey contains Yogi Bear items.

Yoga Bear provides yoga therapy.

 

The Trademark Project, a new blog, became aware of a pending application for the mark TOP TEN TTAB DECISIONS OF 20** filed by a trademark lawyer, for articles about decisions of the Trademark Trial and Appeal Board.  The blogger notes that the mark seems descriptive, and also, it appears to be an unregistrable phantom mark.  It asks “Someone please explain this one.”

Without commenting on this particular application, Trademark Project’s query seems to concern what are known as phantom marks.  When someone uses a series of marks that are mostly similar but might differ only through a single term such as a date, or flavor, or topic, there is an economic motivation to file a single trademark application and leave one element blank (the Phantom element).  IDG, for example, owns a 1995 registration for “_____ FOR DUMMIES.”

However, a Federal Circuit case in 1999, In re International Flavors & Fragrances Inc., 51 USPQ2d 1513 (Fed. Cir. 1999), suggests that such registrations are not enforceable.  Furthermore, PTO Examination Guide No 1-99 says that the PTO will reject such applications, on the grounds that phatom marks violate the one mark per registration rule.  See the Examination Guide for work-arounds.  I note that IDG owns an additional registration for the term FOR DUMMIES.

Information on King Feature’s Phantom character here.