Trademark Searches When, Why,

Easy

● Paul Raynor Keating, Esq aw.es● paul@law.es L

Friday, April 24th, 2015

What is a Trademark?

● Paul Raynor Keating, Esq aw.es● paul@law.es L

Trademarks are contextual

Use is EVERYTHING

Dictionary Words = trademarksDescriptive Words = trademarks

Indicator of “source”

Why Do a Search?

● Paul Raynor Keating, Esq aw.es● paul@law.es L

Purchasing valuable domain

Purchasing portfolio

UDRP

C & D received

Financing

HOW to Search

● Paul Raynor Keating, Esq aw.es● paul@law.es L

Spreadsheet- sort by revenue

Look for concentrations

Do the high revenue names makes sense?

Portfolio Purchase

● Paul Raynor Keating, Esq aw.es● paul@law.es L

Google

Look for obvious hits

Easy Rule: if there are repeated references, investigate Descriptive Use.

HOW to Search

Remember Historical Searches

● Paul Raynor Keating, Esq aw.es● paul@law.es L

Ohim DatabaseRegistered marks 38 countries

      tmdn.org/tmview/welcome#

USPTO US only

uspto.gov

HOW to Search

● Paul Raynor Keating, Esq aw.es● paul@law.es L

Avoiding ConflictsRespond to claims

Reasonableness of claim

Unique termDescriptive useYour use – Collisions ??

How close is the match?

● Paul Raynor Keating, Esq aw.es● paul@law.es L

Avoiding Conflicts

Reasonable Claim:SurrenderPotential sale

Unreasonable Claim

Cost vs Domain Value

● Paul Raynor Keating, Esq aw.es● paul@law.es L

Don’t buy TM domains

Get out of the business

TM’s are all about use

TMs are everywhere

Avoiding Conflicts

● Paul Raynor Keating, Esq aw.es● paul@law.es L

Examples

Alessandro International GmbH v. Alessandro Gualandi, D2014-2111 (alessandro.com)

Respondent is not commonly known by the name Alessandro because hundreds of thousands of individuals have the same name as well.

● Paul Raynor Keating, Esq aw.es● paul@law.es L

Examples

Copper Wire Stripper Limited v. Joe Williams (NAF FA1502001604460 (copperwirestripper.com).

Trademark found even though registration contained the following: “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "COPPER WIRE STRIPPER" APART FROM THE MARK AS SHOW”N

● Paul Raynor Keating, Esq aw.es● paul@law.es L

Examples

ModernBathroom vs. ModernBathroomss.com

We own the trademark on the website www.modernbathroom.com and so will defend our trademark in court by suing anyone who buys and attempts to use your website modernbathrooms.com. We have already successfully defended our trademark and will not hesitate to do so again. We are prepared to pay you $1,000 for your website, since it will not be a usable website by anyone but us. If you are interested please contact me with proof of ownership of the domain. Thank you.

Registration Number 3514633 - Retail stores featuring bathroom fixtures, vanities, sinks, faucets, toilets, mirrors, and accessories therefor

● Paul Raynor Keating, Esq aw.es● paul@law.es L

Complainants Say the Darndest Things

“Meterman is not in any sense a dictionary word”

“’CHEAP HOTEL’ is a famous mark”

“187 was invented by Telecom Italia”

{

Trademark Searches When, Why,

Easy

● Paul Raynor Keating, Esq aw.es● paul@law.es L

Friday, April 24th, 2015

Thank you.