Towards better brand protection


Mark Calandra

Several changes to the Internet landscape over the past year have brought new challenges for brand owners, as Mark Calandra explains.

There was tremendous upheaval in the intellectual property realm in the past year. Consider: in less than 12 months the adults-only .xxx domain extension went live, ICANN announced its new generic top-level domain (new gTLD) applicant list, the number of social media users grew well into the hundreds of millions, and sales of mobile devices increased by nearly 50 percent.

Each season brings its own innovations, all with the potential to enhance or chip away at the value of brands. As this evolution continues, trademark holders have some big decisions to make: how best to protect their brands and enforce trademark rights; where to spend their brand-protection budgets (and maximise return on investment); how to plan for the greatest risks; and how to exploit new opportunities as they arrive.

To thrive in this new environment, brand owners need to shake off their long-held assumptions, take stock of their current strategies, and address whatever shortcomings they find. Look for opportunities to strengthen, streamline, and consolidate your trademarkprotection operations, and not only will the value and security of your brands improve, your IP spending will go even further.

Keep an eye on your trademarks

Trademarks are the centrepiece of all of your sales and marketing efforts, and securing them well in advance of any development activity is essential to maintaining their value. Companies routinely invest millions developing trademarks, and today several of the top global brands are worth upwards of £60 million each, independent of the annual revenues they generate.

Yet it’s not enough simply to clear your trademarks. Both pre- and post-launch, brand owners must also exercise constant vigilance over their marks to prevent their losing value, especially on the Internet, which has made it so easy for infringers to mimic well-known brands and, absent a robust monitoring programme, continue to get away with it.

Indeed, an effective monitoring programme is your best way to avoid trademark dilution. Find a vendor that offers not only traditional search capabilities but trademark monitoring that tracks your competitor’s filings, helps you oppose conflicting marks, and reveals industry trends—and it needn’t cost the earth.

Treat your domains better

While clearing trademarks was enough to protect your brands 20 years ago, domain names nowhave a similar importance when launching and protecting a new brand. Domain names anchor most companies’ marketing efforts, give form to their supply chains, and enable secure, web-based transactions. Their importance stands to grow with the launch of ICANN’s new gTLD programme, which will make it possible for companies to deepen their web presences considerably.

Given the importance of domain names, it’s surprising how many brand owners divide their registrations among a number of vendors, leading to a scattered approach to registration and renewals. Companies may do this for a number of reasons: bargain hunting, the familiarity of legacy vendors, or an attempt to distribute risk. But by working with a mix of service partners, they may actually invite risk in the form of dropped names, complex invoicing, and a lack of consistent strategy. They also miss out on economies of scale. In fact, most companies can expect to see some savings by consolidating their domain portfolios with one registrar.

A second but no less important factor deserves mention. Over the years, many brand owners have acquired a multitude of domain names with scant attention to their value, how they are used, or even whether they point to live content. Consequently, they’re spending money on unnecessary registrations while losing money to infringers who have squatted names with real value.

To remedy this situation, begin with a thorough analysis of your portfolio. Brand owners need to have metrics in-hand to understand how much traffic their current names are getting, what damages third party registrations are inflicting on their brands, and what valuable names are still available. With the advice of a qualified service partner, companies can make data-driven decisions to optimise their domain portfolios, resulting in better trademark protection and increased direct-navigation traffic.

Brand owners should also keep an eye on trends in the online space. For instance, as growth flattens in mature markets, newer markets such as Brazil and China are helping to fill the void. A qualified domain management partner can advise you on the desirability of acquiring localised domain names, including Internationalised Domain Names (IDNs), to serve these new markets.

In short, your domain registrar should be much more than a point of attachment between your company and the various registries. It should serve as a reliable partner when it comes to the protection of your brands online. If your current vendor doesn’t offer portfolio analysis and strategic advice as part of the service, it’s time to find one who does.

Shine a light on the Internet’s dark places

As you’re well aware, the Internet is now the chief driver of commerce worldwide, and will remain so for the foreseeable future. It is also a minefield of false-association websites, payper- click sites, counterfeit goods storefronts, fraudulent auctions, and email and client-data scams. Without adequate measures in place to detect these threats, your trademarks and brands are vulnerable to dilution, imitation, disparagement, and lost traffic.

Many organisations lack the time and specialised tools required to monitor the web adequately for threats, a need that has given rise to a number of monitoring applications on the market today. Still, it’s important to choose the right one: the best monitoring platforms crawl billions of web pages, and if that information is not boiled down to an actionable form, you’ll be greeted each day by a monumental data dump. You should partner with a service provider who not only detects threats against your brands but prioritises them according to impact.

Scrutinise social media

Just as websites have been indispensable to most companies’ sales and distribution channels for years, the recent rise of social media has proved a marketing boon for many organisations, enhancing their visibility and their ability to influence consumers. At the same time, it has increased the available terrain for trademark infringement and disparagement. Social media sites give legitimate consumers a place to broadcast their preferences, but they also can be appropriated by rogue operators or even competitors bent on trashing your reputation. Incidences of brand abuse, however small, can have a direct impact on your sales and brand perception.

Because social media content updates happen quickly and in a globally diffuse manner, real-time social media monitoring is a must for any corporation that ventures on to the social web. By subscribing to one of the top services available today, companies can receive focused, detailed reporting on all social media mentions of their brands and trademarks. These services identify, track and consolidate mentions of relevant brands on established and emerging social media sites— from posts, blogs, and tweets to articles and other types of social media mentions—with data refreshed according to need.With the top services, results are accompanied by a ‘sentiment analysis’—commentary on whether a mention is positive or negative. This gives businesses insight into their current marketing and customer relationship management strategies. If reports are negative (and the views are coming from a legitimate source), the company knows it needs to improve performance.

Brand holders should also reserve their trademarks, in the form of branded usernames or ‘vanity URLs’, on social media sites well in advance of any marketing efforts. Even if they have no immediate plans to launch their brands on Facebook, Twitter, Pinterest, YouTube, LinkedIn, etc, they should reserve their names in case their plans change, and to prevent exploitation by third parties.

Shrink your legal spend

In the event that their monitoring programmes do detect infringement, companies can assert their IP rights in a variety of ways, ranging from cease and desist letters to extra-judicial action and finally, legal action. Historically, most infringement claims have been settled in court, an expensive and time-consuming process. Fortunately, companies now have an expanded palette of enforcement options at their disposal.

For example, new enforcement tools on the market today make it easy to create, send, and track cease and desist letters to any number of parties. For domain names, the Uniform Domain Name Dispute Resolution (UDRP) process offers a proven extrajudicial means of recovering trademarked URLs that have fallen into others’ hands. The more capable brand protection service providers should offer support services for both of these recovery options at a price much lower than you would pay an attorney.

It bears mentioning that enforcement actions of any kind tend to be much more expensive than defensive actions. Always be sure to register domain names and usernames for new brands before you apply for trademarks or begin operating under the new names. Fail to do this, and third parties will pounce on them as soon as your trademark applications enter the public domain, leading to expensive recovery costs down the road.

Find a vendor you can trust

Putting all these tools to work for you is the job of a trusted service provider. It’s important to work with a vendor who offers your company a single point of contact, identifies with yourbrand, understands your goals, and can tailor a strategy specific to your needs. Your legal, IT, and marketing teams will also appreciate the simplicity of working with just one vendor.

Cost is always a concern when outsourcing a service, especially in today’s softer economy. However, cost alone shouldn’t blind companies to the intrinsic value of the services they are getting. Other factors to consider include the type and breadth of the services offered, how well they are integrated, the vendor’s flexibility, the degree of customisation possible, and the level of customer service provided.

Customer service is an especially important differentiator. Your brand protection partner should provide you with a dedicated account manager, a support team, and 24/7 availability. They should be willing to conduct market research on your behalf, alert you to new challenges, and provide you with regular updates on ways to strengthen your current trademark protection programme.

It’s your right as a brand holder to insist that your service provider views you as a true partner and shares your day-to-day concerns. Only then will your trademarks receive the protection they deserve. And only then can you embrace the new opportunities that come your way.

The CSC team can be contacted at:

This article was first published on 01 September 2012 in World IP Review

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Trademarks and Brands Online