TRADEMARK INVESTIGATIONS

Transcription

1 TRADEMARK INVESTIGATIONS Richard Young Quarles & Brady LLP, Chicago, Illinois, United States Purpose: This checklist, particularly as it relates to ethical and legal restrictions on investigations, is primarily focused on U.S. practice. A. Focusing the Investigation 1. Identify the purpose of the investigation Is the investigation directed to clearing a mark of a possible conflict with a prior user? Is the investigation directed to ascertaining the scope and strength of rights of a prior user for possible acquisition of trademark rights? Is the investigation directed to a likely junior user to assess possible litigation and litigation strategy? B. The Subject of the Investigation 2. Identify the information that is sought about the mark Is the mark currently in use? What is the nature of use of the mark? When was the mark first used? Does the mark have any meaning? Why was the mark adopted? 1

2 What goods/services are being sold under the mark? Has the use of the mark changed over time? Has use of the mark ever been discontinued? In what channels of commerce is the mark used? Who are the customers of the trademarked goods/services? What is the geographic scope of use of the mark? Is the mark used under license? Has the mark been licensed to others? Did the owner acquire its rights in the mark from someone else? 3. Identify the information that is sought about the marks owner Where is the owner located/doing business? Who are the owners, officers or executives of the owner? Where are the owner s offices? What is the size of the owner company, by sales, assets, employees? What is the scope of the owner s business? When and where was the owner formed and what is the form of the organization? Is the owner in bankruptcy? Does the owner have any related companies; e.g., predecessors, parents, subsidiaries? Has the owner ever been affiliated or done business with the proprietor or the proprietor s licensees? Did the proprietor consent to the owner s use of the mark? 4. Identify the information that is sought about the goods bearing the mark What is the source of the goods? Who else is in the chain of distribution of the goods from the manufacturer to the consumer? Are the goods imported and, if so, how? Should samples or photos of the goods be requested? Where can the goods be purchased or found? 2

3 C. Identify Possible Sources of Information 1. Can the information be obtained in public records? Secretary of State s offices Trademark registry (U.S. Patent and Trademark Office) U.S. Securities and Exchange Commission (for public companies) U.S. Customs 2. What information is available on the internet? Whois directory Wayback machine Company websites Retailer websites Fan sites Blogs Third party posts Domain tools Online yellow pages Internet search engines Press releases Online cross-reference directories Online industry trade sites Archived news databases 3. Can the information be obtained through telephone calls? Consider ethical and legal limitations (see Ethical and Legal Restrictions on Investigation, below) Consider reliability issues Consider risk of disclosure of investigation 3

4 4. Is the information only obtainable through on-site visits or purchases? Consider ethical and legal limitations (see Ethical and Legal Restrictions on Investigation, below) Consider risk of disclosure of investigation Consider likely added cost D. Selecting the Investigator 1. Should you conduct the investigation yourself? Likely not an ethical issue except for phone calls and on-site visits Consider possible need for affidavit or trial testimony; may be preferable to have independent investigator Consider ability to maintain anonymity and the risk of discovery through phone calls and internet searches 2. Should outside counsel conduct the investigation? Likely not an ethical issue except for phone calls and on-site visits Consider possible need for affidavit or trial testimony; may be preferable to have independent investigator 3. Should the investigation be conducted by a paralegal? For phone calls and on-site visits, consider ethical and legal limitations (see Ethical and Legal Restrictions on Investigation, below) Consider possible need for affidavit or trial testimony; may be preferable to have independent investigator Consider ability to maintain anonymity and the risk of discovery through phone calls and internet searches 4. Should the investigation be conducted by a private investigator? Consider level of experience/expertise in trademark investigations Less risk that the investigation will be disclosed Determine whether the investigator will testify or provide an affidavit Cost considerations 4

5 Consider whether the investigation be conducted by phone or on the ground Private investigators are typically held to a lower standard of honesty and fair dealing than lawyers. 5. Factors to consider in selecting the investigator Cost Speed Control and leverage Confidentiality Amount and type of information required Available resources and time Need for follow-up investigation and risk of disclosure or inconsistent results from multiple investigations (especially phone calls) Putting employees at risk Expertise Anonymity E. Ethical and legal restrictions on investigation 1. Be careful not to obtain phone records or wiretaps through illegal, fraudulent or unauthorized means, including through the use of a pretext (18 U.S.C. 1039) 2. Consider state and local laws relating to the gathering of information and documents directly from the person being investigated, including by dumpster diving and by the recording of telephone conversations 3. Consider laws, rules and case law in the jurisdiction of the person or company requesting the investigation, the jurisdiction(s) where the investigation will take place and the jurisdiction where the fruits of the investigation may be used 4. Be aware that pretext investigations raise ethical issues: ABA Rule 4.1: A lawyer shall not knowingly make false statements of material fact to a third person ABA Rules 4.2 and 4.3 restrict a lawyer s ability to communicate with an adverse party 5

6 ABA Rules 5.3 and 8.4: Ethical issues can generally not be avoided through the use of non-lawyer employees or investigators 5. To limit risk of illegal or unethical investigations, consider: Limiting contact to low level employees, preferably employees who regularly communicate with the public Seeking information as a consumer Not seeking extended admissions Not engaging in elaborate deceptions Not contacting a company or person after filing a lawsuit against them 6