Parties must be aware of the vital differences between TTAB administrative proceedings and federal court civil litigation highlighted by a recent Third Circuit decision. TTAB judgments may fall flat in federal court, according to a recent Third Circuit decision.
How will your client pay for defense or enforcement?: "Commercial general liability (CGL) policies cover liability for “personal and advertising injury,” ...."
--See "California To Draw The Lines In Disparagement Liability"* (see discussion at https://www.coverageopinions.info/Vol3Issue16/HartfordCasualty.html; decision here and below)
Hartford Casualty Insurance Company v. Swift Distribution, Inc., et al., 326 P.3d 253 (Cal. 2014), 59 Cal.4th 277
How will your client enforce its rights?:
"While using TM or ® is not mandatory per se, it is highly recommended to put the world on notice that you own the mark, deter potential infringers,
and allow for the greatest speed and latitude in resolving infringement disputes."
- Alecia Schmuhl, Esq., http://www.beankinney.com/, March 2, 2014 Newsletter, "What’s That Symbol All About? Protecting Your Trademarks with Proper Notice Symbols"
See a notice example: Apple - Legal - Trademarks
Steps you can take: "What Do You Do When Someone Steals Your Content", by Lorelle VanFossen
Effective enforcement does not require "bullying": Jack Daniel's sends the most polite cease-&-desist letter ever
User reporting systems, such as "Removing Content from Google"
submit infringement reports: for Alibaba, Amazon, eBay, Etsy, Facebook, Pinterest, TaoBao
Providing Actionable Instructions to Trademark Investigators - Lisa Greenwald-Swire and Mark Puzella | August 1, 2014
N.B.: Make sure you name the correct party filing the request for extension of time to oppose!: TTAB Opp. 91214792, Warren Distribution, Inc. v. Royal Purple, LLC, 115 USPQ2d 1667 (TTAB 2015) [precedential]
Anti-Counterfeiting and Online Brand Enforcement: Global Guide 2021: Global Guide 2021
"Ambush" marketing: examples from FIFA events, by Dr. Tay Pek San, Associate Professor, Faculty of Law, University of Malaya, Kuala Lumpur (in association with KASS Int'l.)
Has the client undermined trademark rights by its patents?
When Patents Hurt Trademarks: What We Can Learn From Shredded Wheat (comment by Lora Friedemann, Esq.) and Opinion: KELLOGG CO. v. NATIONAL BISCUIT CO., 305 U.S. 111 (1938)
Where does the problem originate?:
"Counterfeit Certification Marks: How to Certify that the “Certified” is Certified", by Susan Neuberger Weller, Esq., of Mintz Levin (5/19/2014 article posted below)
Verify information when searching for answers: see sources here and attached .pdf copy
Is the whois email contact information valid? Checking email addresses
NEW: DMCA *annual* agent registration requirement as of 12/1/2016 - see here (whom to contact for alleged website copyright infringement)
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Collecting evidence: "Wayback Machine"/Internet Archive and Page Vault; see also other tools reviewed and linked at:
https://tech.co/tools-to-help-you-search-the-archived-internet-2018-06
WHOIS Service [general, and privacy block email contacts]
Domain Name Dispute Resolution Service and Norid: Domain name registries around the world
UDRP Search - search by Domain, Complainant/Respondent, Case Number, or Text for cybersquatter history
Flagfox - Firefox extension (flag icon for webserver's physical location)
Tools re: website content changes
U.S. Customs and Border Protection - Trade (application to record IP rights for border control) and IP priority issues
Goofbid - eBay Tools, eBay Misspellings, eBay Typos, eBay Sniper, eBay Bargains
Search for Opposed Party for Opposed Brand
International Consortium of Investigative Journalists and https://trollingeffects.org/
PACER access - federal court records - see also Recap the law - Firefox extension
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* See re: disparagement liability: Hartford Casualty Insurance Company v. Swift Distribution, Inc., 210 Cal. App. 4th 915 (2d Dist. Ct. App. Oct. 29, 2012), review granted 152 Cal. Rptr. 3d 420 (Feb. 13, 2013)
"Trademark Bullying"
Jack Daniel's sends the most polite cease-&-desist letter ever ]
When Trademark Bullying Gets Expensive: Jenzabar, Inc. v. Long Bow Group, Inc.
Third Party Trademarks: Fair Use or Foul?
UPDATED October 3, 2021