When clearing a new brand or evaluating a multi-country trademark dispute, it is useful to get a quick snapshot of whether a mark is registered in key jurisdictions around the world.  For a long time the cheapest “quick and dirty” searches cost several hundred dollars from the outside search firms (and usually took several business days to receive).

When several countries began putting their national trademark registries online, I commissioned Nathan Hoover (nhoover@nyc.rr.com), developer extraordinaire, to create a trademark metasearch, a program which queries the various databases and returns the results in several minutes (the Hungarian trademark database even returned depictions of design marks).

I am now happy to roll-out Metasearch 2.0.  It has been migrated to the .NET platform, and is a lot faster than the first version.  We have also added the WIPO database of international registrations.  The search now incorporates the trademark registries of:

United States

Canada

WIPO

CTM

United Kingdom  

Hungary

Finland

 

Additional countries are being added in the coming weeks.

While not a substitute for retaining local counsel to advise on the availability of a mark or legal status of a registration in any jurisdiction, the Metasearch is a good first step in evaluating a trademark.  By opening several browser windows at once, you can mitigate the limits of dead-hit searching by simultaneously searching variants of a mark quickly (i.e., FOO BAR and FOOBAR).  The results are displayed in an easy to read spreadsheet format.

Try out the search (if you use POKEMON as a search term, you get a picture of Pikachu from Hungary).  Click on “metasearch” on the left sidebar.  I hope you find the search helpful.

p.s. Because the search is based on the .NET platform, it can be delivered as a web service to your firm’s web site or intranet.  We are also developing a plug-in which would allow search results to populate your own spreadsheet or database.  Please contact me at marty@schwimmerlegal.com for details.

The NY Times and the Wall Street Journal reports today that Phillip Morris has filed 8 lawsuits in NY and California against websites which are, allegedly, illegally importing Phillip Morris cigarettes into the U.S.  The sites include cheapmarlboro.com,  discount-marlboro-cigarettes.com and europecigarettes.com. 

Cheapmarlboro.com and europecigarettes.com appear to do business in Europe. Hard to say where discount-marlboro-cigarettes.com does business.  Cheapmarlboro.com indicates that it will ship anywhere.  Europecigarettes.com actively identifies the U.S. as a potential market.  Interestingly, these sites have legal FAQs regarding the legality of shipping cigarettes across borders.  All these sites are multi-brand sites, so expect other cigarette producers to get involved.

Although the Internet, in theory, could exacerbate the problem of grey goods if a distributor can promote goods outside its normal market more easily, I would say we have not seen an overwhelming flood of reported decisions dealing with this fact pattern, perhaps because as a practical matter, shipping costs and tariffs can eat away at the cost differentials which encourage grey good importation in the first place.  Be that as it may, I don’t think we have an accurate idea of how much grey good traffic has been created by the Web.  I think that after reading about the Phillip Morris filings today, various GCs, in anticipation of being asked by their CEOs, are sending their trademark counsel emails today saying “Pls rev. Issue for us?”

 

I think one of the most complex questions I could be asked by a client is whether its potential trademark litigation was covered under the Advertising Injury clause of its commercial general liability policy.  The problem is that, for reasons unknown to me, these policies continue to define the scope of ‘advertising injury’ and exclusions from such coverage, in standard language using terms foreign to the Lanham Act.  The resulting ambiguity allows the insurance companies to put forward an interpretation of advertising injury coverage which reminds me of the Monty Python skit where Mr. Devious tells the Vicar: “It states quite clearly that no claim you make will be paid.”

Hyman v. Nationwide, a recent Eleventh Circuit opinion, is now the first case to read when tackling the advertising injury question.  The insured had been found liable for trade dress infringement.  It sought indemnity under its standard CGL policy which covered advertising injury, defined as injury arising out of, among other things, misappropriation of advertising ideas or style of doing business.  The circuit court does a nice artistic job of holding that that trade dress infringement is sort of like the misappropriation of advertising ideas or style of doing business.  I like it when policy holders who pay premiums for years and years, get covered. 

However, instead of circuit court judges saying that advertising ideas are somehow protectable when one of the first thing you taught to chant in copyright class is that ideas are not protectable, I would rather have clearer policies.  It is not fun advising your client that your estimate of its litigation expenses may be off by a couple of hundred thousand because you can’t advise with certainty whether insurance will cover.  It’s too late at that point to suggest trademark infringement insurance.

Before you accuse of a hidden agenda in encouraging trademark litigation insurance, you should know that the one time a client of mine was sued and had appropriate coverage, the insurance company took over the case and sent it to an “approved provider,” who, in my professional opinion, was not so great.

This Dept. of Commerce press release is pretty remarkable in its candor regarding its disappointment with ICANN, while simultaneously renewing its agreement with ICANN for a year (alternatives would have been transitioning control of the DNS to ICANN, or firing it and starting from scratch.  Neither alternative was plausible).

There’s something here for everyone who hates ICANN – a warning that ICANN should stick to technical management, and an aside that it should avoid being the government of the Internet.  That is properly the job for [fill in your answer here].

UPDATE:  Given that the title is getting quoted by icann.blog, I want to wimp out and add that I don’t hate ICANN.  I think it has the textbook no-win situation because, in part, it operates in an environment where everyone is self-professed expert, but because this is a novel area, no one’s expertise is all that helpful.  It seems to me that DoC’s comments will actually make ICANN’s job even harder.