Post-Registration Strategic Maintenance and Protection of Your Trademarks


James Nguyen, Senior Counsel at Foley & Lardner, presented two discussions, the first entitled "Post-Registration Strategic Maintenance and Protection of Your Trademarks." He noted that "Trademarks can be a powerful sword, but needed to be actively shielded to protect their strength."

Nguyen covered several helpful tips for managing a trademark portfolio. Counsel should document the first use of a mark, as this may be vital years later in enforcing the mark.

Counsel can also strengthen a mark by expanding uses of the mark into secondary product classes. Also, tracking advertising expenditures by brand or division facilitates establishing later how much money was spent promoting an individual mark. Finally, continuous use is another component of successful trademark management. Counsel should implement a system to regularly monitor the continued use of the company's marks.

In the competitive, fast-paced world of the Internet, Nguyen advises counsel to register all major corporate marks as domain names. Also consider whether your company should defensively register potentially infringing domain names to keep others from having those domain names.

Regularly monitoring your licensees to ensure quality control over their use of your mark is a way to prevent an abandoned, "naked license." "Trademark administrators should be like Madonna; they should pop up everywhere." Nguyen went on to state, "Invest in trademark watch services and domain name monitoring services; they are relatively inexpensive and well worth it for protecting your marks."

James' second discussion topic was entitled "Civil Court Trademark Infringement & Dilution Claims." He opened with a teaser: "This past year's trademark cases can be summed up by things that get people excited: lingerie, the Internet, and Dwight Eisenhower - though not necessarily in that order."

In the initial topic, Nguyen indicated that as a result of the Supreme Court's decision in the "Victoria's Secret" case (VICTOR'S LITTLE SECRET v. VICTORIA'S SECRET), having consumer survey evidence will be critical to establish "actual dilution" needed for a federal trademark dilution claim.

When protecting a client's marks, attorneys should remain mindful of the decision in Dastar Corp. v. Fox, which held that although Lanham Act claims can be used creatively, the Supreme Court essentially found they cannot be stretched too far. Nguyen commented, "In 2003, the judicial trend has been to reign in trademark claims lest they become too broad." Thus instead of including a tenuous FTDA claim, he recommends focusing on the best available claims, such as injunctive relief, state anti-dilution laws, and other claims to enforce your company's marks.

Nguyen next addressed potential infringement issues connected to Internet domain names and web pages. When a famous mark is used by another company in its domain name, the critical factor for infringement is whether the two companies' goods or services are related. Nguyen indicated that it is infringing to use another company's famous mark in meta-tags to drive traffic to your Web site. As a precautionary measure, companies should review their meta-tags for any potentially infringing marks.