INTA Roundtable Archive

Carr & Ferrell LLP has been pleased to host many roundtable discussions among local companies and trademark practitioners on important and timely issues affecting trademarks, domain names, protection for product designs, and other intellectual property issues. This page lists some of the previous INTA Roundtables hosted by the firm. For information on upcoming roundtables, consult our Events page or the International Trademark Association's roundtables page.

Important Note: Discussion outlines are provided for general information and neither constitute legal advice nor are intended to replace the counsel of a trademark attorney.



Expanding Your Brand — Global Clearance & Protection Issues — July 18, 2012

In a world where the web knows no boundaries but trademark laws remain territorial, how can you cost-effectively grow your business without fear that your mark will be pirated? Carr & Ferrell trademark attorneys Jefferson Scher, Joi White, and Aylin Demirci led this detailed discussion on avoiding the pitfalls of expanding your brand internationally.

  1. The Decision to Consider A Brand Expansion Project
    To align a company’s trademark protection strategy with its business strategy, it is crucial that the legal department and/or outside counsel have a good understanding of the roadmap for international expansion. Conversely, to avoid roadblocks to expansion and unwanted litigation and prosecution expenses, the company can benefit from early consultation with counsel on potential obstacles. The decision on how much to invest in clearance and protection will vary widely, and should fit the company’s tolerance for risk.
    1. Coordination with brand/marketing teams
        1. Understanding manufacturing and distribution chains
            1. Understanding the product type and category
              1. consumer goods
              2. pharmaceuticals
              3. financial services
      1. Understanding customers, marketing channels, and regulations
        1. consistent from country to country?
        2. country-/territory-specific regulatory issues?
      2. Education with respect to trademarks and proper selection and usage
    2. What are objectives/goals of the business?
      1. Global brand expansion?
        1. facilities throughout the world?
        2. internet sales only, or as part of larger plan?
        3. shipping product from home country throughout the world?
      2. Manufacturing abroad?
      3. Distribution abroad?
      4. Retail presence abroad?
    3. What is the anticipated timing of foreign activities?
      1. Timing of global roll-out
      2. Regulatory approval necessary?
    4. Are goals/objectives realistic?
      1. Cost/benefit analysis
        1. filing
        2. searching/clearing
      2. Anticipated markets/sales
  2. Where to Start?
    Jokes about “no va” aside, international expansion provides an opportunity to consider updating or replacing a company’s identity or product name(s).
    1. Mark registered in home country/business up and running?
      1. New product lines or expansion of current lines?
      2. Can priority be utilized?
      3. Any linguistic issues in new markets?
    2. New mark?
      1. May have more freedom in creating a mark that will function globally
      2. No priority or other benefits
      3. Timing: Must leave enough time before launch for search/clearance
    3. Domain Names
      1. For a new mark, will the company proceed without the .com?
      2. Is it critical to control country-code extensions?
      3. Registrations in foreign language/foreign alphabets
    4. Prioritizing geographic areas
      1. “Doing business”
        1. Where will the mark be used?
        2. Where will licenses be granted?
        3. Where will products be manufactured?
      2. Additional considerations: potential risks to the brand
        1. knock-offs?
        2. unauthorized third party “trademark-squatting”?
  3. Clearance
    Companies have a wide range of attitudes toward clearance because their approaches to risk management can vary considerably. At a minimum, companies should be aware of identical or closely similar registered marks for the same or related goods and services. Some also may want to have a written opinion of local counsel on the chances of success in a dispute with a senior user. Others may want an in-depth investigation of the senior user’s financial wherewithal and potential vulnerability in jurisdictions where the company has superior rights. In every case, legal departments and counsel should be careful not to underplay the cost and inconvenience of even an unmeritorious challenge.
    1. Why?
      1. Assessment of third party prior rights/risk
      2. Assessment of strength of proposed mark
    2. When?
      1. Advance “global” clearance vs. phased approach — cost/benefit
      2. Are there any countries where a negative search report would cause the company to drop the proposed mark, or is it “too late”?
    3. Where — which countries/territories are “must have” and which can be “skipped” (if any)?
      1. How to identify key countries/territories?
      2. Are the criteria for clearance any broader or narrower than the criteria applied in II.D above?
    4. Preliminary scanning
      1. Sources
        1. Office websites (e.g., OHIM, WIPO, CIPO, INPI, JPO...)
        2. Search vendors (e.g., Thomson, Corsearch)
      2. Can legal departments and U.S. counsel opine on the results?
      3. Any cost-effective options for finding marks in use as a quick knock-out? Who should take responsibility for checking?
    5. Best options for managing costs/quality of searches and opinions
      1. Counsel
        1. Large multi-office firm
        2. Individual counsel —how to select counsel in new jurisdictions?
      2. Search vendors (opining counsel anonymous)
        1. Regional aggregators
        2. Major U.S. search companies
      3. Value of opinions — what do you do with an opinion that says a citation “Could be problematic”?
      4. Non-trademark searches: trade names, software titles
    6. Linguistic/Cultural attributes of proposed mark
      1. Meaning in various languages
      2. Local customs
    7. Potential follow-up actions for conflicting rights
      1. Non-use cancellation?
      2. Acquisition of prior rights?
      3. Negotiation of coexistence terms?
  4. Filing
    Filing early and often isn’t the only strategy, and might not be affordable for all companies. And then there is the balancing of many trade-offs...
    1. To file or not to file?
      1. Offensive/defensive filing
      2. Pre- or Post- use?
      3. Prioritizing marks
        1. primary brands
        2. secondary brands
    2. Countries
      1. Rights based on use or filing?
      2. Intent-to-Use available?
    3. Mechanism
      1. “National” vs. “Supranational” filings
        Pros and Cons of the Madrid system
      2. Any reason not to use the CTM in Europe and file in individual countries instead?
      3. Any other mechanisms for saving costs?
    4. Form
      1. Word alone; word + logo; logo?
      2. New mark + house brand?
      3. Translation/transliteration/local language characters?
      4. Trade dress
      5. Other aspects/elements?
    5. Additional country/territory-specific options for protection
      1. Designs
      2. Well-known/famous marks?
    6. Description of Goods
      1. Tension between wanting consistency and meeting country-specific requirements
      2. Best practices for responding to requests for amendment of goods
    7. Hiring local counsel
      1. Key relationship for pre-filing advice, effective prosecution, and resolution of prior rights issues, even under the Madrid System
        1. Criteria for hiring?
        2. Referrals or recommendations?
  5. Post-Registration Issues
    1. Keeping track of maintenance dates and requirements
      1. Ensuring requirements (such as use requirements) can be met
      2. Set up appropriate mechanism to “look ahead”
        1. Upcoming due dates and requirements to be monitored
        2. Retain vendors for renewal as a risk management strategy?
      3. Updating any change of ownership/name change
    2. Monitoring licensee use
    3. Monitoring manufacturers/distributors
    4. Gray market goods issues?
  6. Overseeing Global Use
    1. Coordination/cooperation with appropriate business/marketing personnel
      1. Creation of review protocols to ensure consistency
        1. packaging
        2. advertising/promotional materials
    2. Understanding local trademark/labeling/packaging requirements
      1. Trademarks translated?
      2. Label requirements (e.g., tobacco, alcohol products)
      3. Appropriate use of local symbols (e.g., Kosher; Halal)
    3. Internet usage
      1. Domain name strategies
      2. Websites
      3. SEO
  7. Third Party Marks/Uses
    1. Monitoring/watching service?
      1. Global?
      2. Country-specific?
    2. Options for “watching” common law uses?
      1. Web clippings, Google Alerts, etc.
      2. Domain names?
    3. Opposition/cancellation strategies
  8. Enforcement
    1. Establishing corporate policies for dealing with infringements/infringers
    2. Gathering information re infringements/infringers
      1. Educating corporate representatives
      2. Internet monitoring
        1. auction sites
        2. blogs
        3. third party websites
        4. third party keyword uses
    3. Domain name monitoring
    4. Registering marks with customs officials
      1. Identifying key countries
        1. manufacturing sites?
        2. counterfeit hot-spots?
      2. Educating officials
    5. Civil remedies
      1. Injunctions?
        1. seizure?
        2. destruction?
      2. Damages?
      3. Attorney’s fees?
    6. Criminal options
      1. Understanding local laws, relief available
      2. Working with local officials
    7. Identifying and educating foreign counsel
  9. Managing Client Expectations
    1. Costs
      1. Clearance
      2. Filing
      3. Enforcement
    2. Timing
    3. Enforcement



Internet Privacy and Emerging Issues Relating to Online and New Media Enforcement — September 14, 2011

Join brand owners and trademark attorneys for a discussion of protecting trademarks online, and stopping unauthorized use in domain names, social media, mobile applications, and advertising. Cutting edge issues include: How can brand owners effectively track down anonymous infringers? Is there an effective way to track activity in app stores? What is the most cost effective strategy for avoiding cybersquatting in new TLDs like .xxx, and the anticipated era of .anything? Exchange tips and tactics, and network with your colleagues in the Peninsula and South Bay area. Carr & Ferrell trademark attorneys Jefferson Scher, Joi White, and Aylin Demirci led this wide-ranging discussion of hot topics.

  1. Internet Privacy and Brand Reputation
    1. Increasing sensitivity to privacy of personal information
      1. Concern about being tracked (e.g., iPhone wi-fi log, private surfing services)
      2. Concern about unexpected disclosures and constantly changing privacy rules (e.g., Facebook, Google Buzz)
      3. Concern about behavioral monitoring to drive advertising and content (e.g., FTC rules)
      4. Data breaches have become far too routine (e.g., lost laptop, hacking transactional information)
    2. Mishandling personal information could damage your businesses
      1. Anyone inclined to hire HB Gary security consultants?
      2. Anyone subscribing to the PlayStation network?
    3. Do’s and Don’ts for brand owners
      1. DO create a privacy policy that is suitable for your business and customers: one size does not fit all
      2. DON’T post a privacy policy with which you can’t or won’t comply
      3. DO honor marketing opt-out requests, and police third parties who conduct email campaigns on your behalf
      4. DON’T destroy your ability to communicate with your customers by ending up in a spam “black hole” database
      5. DO engage with customers online in a positive manner to demonstrate (and build) goodwill, without disclosing customer information
      6. DON’T pretend to be independent of the company and get caught planting positive reviews and fake endorsements
      7. DO develop PR campaigns and contingency plans to combat issues and respond quickly !
      8. More?
  2. Policing and Enforcement Online: Domains
    1. Diverse usage scenarios affect enforcement strategy — prioritization and implementation
      1. Diversion by competitors or their affiliates
      2. Pay-per-click cybersquatting
      3. Phishing sites to grab logins and account information
      4. Protest or other potentially protected content
    2. Geography Matters:
      1. ccTLDs: Disputes with Third parties and With Resellers
    3. Strategies for Policing
      1. Domain Watch services? Searches? Other options?
      2. Can legal be a profit center by capturing in-use domains?
    4. What works and what doesn’t, how fast and at what cost?
      1. ACPA regular and in rem actions
      2. UDRP or other registrar agreement-based remedy
      3. DMCA take-downs when content has been copied
      4. Attempts at acquisition, with or without efforts to remain anonymous
      5. For phishing scams: criminal prosecution or FTC or State AG enforcement?
    5. Problem: how to track down the registrant
      1. Common to use WHOIS privacy services to hide identity — best approaches for unmasking?
        1. Can an investigator help, or is there too much risk of tipping off the target?
        2. Is it necessary to file a UDRP action against the privacy service or serve a subpoena for the registrant reveal process?
      2. Listed information may be fictitious — need a trip to the Caribbean?
      3. Some registrars may be difficult to distinguish from professional cybersquatters — do you have a friend at ICANN? Two new Compliance officers:
        1. Maguy Serad, Senior Director of Contractual compliance, ICANN
        2. Carlos Alvarez, Contractual Compliance Manager/Auditor, ICANN
        3. Khalil Rasheed - Sr. Manager, Contractual Compliance, ICANN, (
      4. Counterpoint: Forcing domain name registrants to disclose personal contact information through WHOIS could put them at increased risk for spam and phishing. How should we balance the conflicting interests?
    6. What to do about new generic top level domains?
      1. Case-by-case, or better safe than sorry, or do we all have registration fatigue?
      2. xxxTLD sunrise period: finally, an option to block
  3. Policing and Enforcement Online: Search Engine Keyword Advertising
    1. Is it still a problem? Do you monitor (and, if so, how)?
    2. Advertiser liability vs. search engine liability
      1. Overarching question of proving LOC and damage
      2. Is search engine liability still a live issue? Rosetta Stone Ltd. v. Google Inc.
    3. Counseling notes
      1. Companies should beware of “consultants” managing their keywords
      2. Beware of fuzzy matching creating the appearance of a keyword buy
      3. Update reseller agreements / guidelines / policies
      4. Counsel need to be on guard for an emotional reaction out of proportion to the potential for harm to the business
  4. Policing and Enforcement Online: Other Scenarios
    1. Social network usernames and Posts (especially Facebook, Twitter)
      1. Who manages the Company’s/Clients’ Twitter/Facebook Account? What to do about employee vs. company control?
      2. Do social networking posts get Legal Review?
      3. Are take-downs and take-overs getting easier?
    2. E-mail Scams to obtain personal data and other phishing schemes
      1. Example: Unsolicited emails for job openings to obtain personal data
      2. How can brand owners fight back ?
        1. Report to FTC ?
        2. UDRP/ACPA ?
        3. Place warnings of phishing schemes on brand owner’s Web site?
  5. Mobile applications
    1. Company app considerations
      1. New names/icons may require clearance or registration, especially if the app publisher is required to indemnify the app channel
      2. Space constraints may lead to unauthorized alteration of word marks and logos
      3. Is the use of third party symbols for information or linking a nominative fair use or impliedly licensed?
      4. Is a disclaimer of any affiliation with a brand owner in an app’s terms of use enough to eliminate claims of consumer confusion?
    2. Third party or licensee app concerns
      1. Apps may make unauthorized use of company names, product and service names, logos, and copyrighted content
      2. Poorly programmed apps or those that fail to work but incorporate unauthorized branding may result in negative opinions of brand owners
      3. Apps may make it easier to obtain a user’s personal data through data theft, data or web scraping by mimicking a brand owner’s app
    3. Combating third party app misuse
      1. Contact the companies behind app marketplaces
      2. Contact developers directly
      3. Consider public relations before taking action
      4. Consider proactive public relations campaigns
    4. Any special licensing considerations for authorized apps?
  6. A look ahead ... A gTLD of One’s Own — Increased domain space but enforcement nightmare?
    NOTE: Initial Introduction—this topic will be covered in more detail in 2012 after we gain a better understanding of how the process is working.
    1. Set to launch in the fall of 2011 for brand names, generic terms and locations: Ex. .BRAND; .SHOES; .NYC
    2. Are companies ready? What are some of the considerations?
      1. Benefits to trademark/Brand owners possibly a strong new channel for internet marketing that reinforces positions, promotes loyalty and can be found instinctively
      2. You own your own Registry
        1. Trusted by your members;
        2. Information is authentic;
        3. Infringers are locked out;
        4. Make your own rules (who is in who is out)
      3. Might get left behind
        1. If you do not apply, you might get “locked out” of a valuable address (but brand owners can object if others apply for a gTLD of the brand owner’s trademark);
        2. No second chance to buy “your brand” if someone else with rights obtains the TLD
    3. Will expense keep brand owners away?
      1. Application fee is expensive
      2. Possibility of auctions increases fees
      3. Most companies will need third party assistance to run a domain Registry
      4. Will require dedication of marketing resources and personnel
      5. Unknown expenses



TTAB Legal Update and Practice Tips — June 9, 2010

All trademark practitioners eventually find themselves in an opposition or cancellation proceeding before the Trademark Trial and Appeal Board. Prepare now with a review of the latest rulings from the Board, and a discussion of essential practice pointers. Exchange litigation tactics and settlement strategies, and network, with your colleagues in the Peninsula and South Bay area. Carr & Ferrell trademark attorneys Mary Cabanski, Joi White, and Jefferson Scher led this illuminating session.

  1. What's New at the TTAB
    1. Key Legal Developments since January 2009 — To be revealed!
    2. Key Procedural Developments since January 2009 — To be revealed!
  2. Twenty (plus) Dumb Mistakes To Avoid at the TTAB — Join us for the full details!
    1. Pre-filing Mistakes
      1. Not Checking Your Armor before Going into Battle
        1. Neglecting to check your registrations for vulnerability
        2. Failing to cure Declaration errors to avoid fraud counterclaims
    2. Opposition Extension Requests
      1. Requesting an extension of time to oppose for the wrong party
      2. Filing an extension request on paper for a Madrid Protocol extension
      3. Seeking an extension beyond the maximum 180 day period
    3. Notice of Opposition or Petition for Cancellation
      1. Forgetting to serve the complaint
      2. Serving the wrong party
      3. Serving the complaint via mail, but omitting a copy of the proof of service from the TTAB filing. (TBMP §§ 2.101a, b, d4; TBMP §§ 2.11a, b, c4)
      4. Challenging a registration more than five years old on grounds not permitted under Section 14(3) of the Lanham Act
      5. Praying for monetary or injunctive relief (this prayer cannot be answered!)
    4. Filing an Answer or Requesting an Extension
      1. Failing to consider the non-extendable deadline to hold the initial conference when deciding whether to Answer or extend
      2. Failing to include affirmative defenses for Madrid cases: you cannot amend your pleadings!
      3. Failing to include a mandatory counterclaim
    5. Initial Disclosures and Discovery
      1. Failure to Meet the Discovery Conference Deadline
      2. Serving discovery requests before making initial disclosures
      3. Serving more than 75 interrogatories counting subparts
      4. Failing to incorporate general objections into individual discovery responses
      5. Failing to file Motion to Compel before the opening of the first testimony period
      6. Failing to make good faith efforts to resolve discovery disputes before filing a motion to compel
    6. Motions for Summary Judgment
      1. Filing a motion that requires the TTAB to resolve contested issues of fact
      2. Filing a motion before the party has made its initial disclosures (except in cases involving claim or issue preclusion or lack of jurisdiction)
      3. Using the procedure to obtain a "quick" resolution of the case
    7. Expert Disclosures (§ 2.120(a)(2))
      1. Withholding experts from discovery responses
      2. Assuming you can retain a new expert after the disclosure deadline
    8. Pretrial Disclosures (§ 2.121(e))
      1. Failing to disclose specific information about witnesses on whose testimony a party wishes to rely
      2. Missing the witness disclosure deadline
      3. Missing the opportunity for challenges based on lack of pretrial disclosure
    9. Testimony Depositions
      1. Failure by the witness's counsel to effectively authenticate evidence
      2. Failure by opposing counsel to make timely objections during deposition



Global Trademark Searching — September 26, 2008

In a Web 2.0 world, brands are key differentiators driving the traffic that separates successful services from the rest of the pack. Companies seeking to serve a global market, or acquiring promising startups, face significant challenges in avoiding conflicts with names and marks launched by web-savvy tech entrepreneurs around the world. Carr & Ferrell Partner Jefferson Scher led this two-hour discussion on search strategies and techniques for a global economy.

  1. Devising an Appropriate Search Strategy
    1. Is “Whatever can be done until time and money are exhausted” a strategy?
    2. What is the purpose of the search?
      1. Clearance (avoidance of infringement; demonstrating dilution)
      2. Due Diligence (confirm status of claimed assets, uncover others)
      3. Other? (competitive intelligence?)
    3. What should be the geographic scope of the search?
      1. Which countries are relevant?
        a) Where will the mark be used?
        b) Where will licenses granted?
        c) Where will products be manufactured?
      2. Which countries are mission critical?
      3. Are there any countries where a negative search report would cause client to drop proposed mark?
    4. What type of search should be used?
      1. Screening searches
      2. Clearance searches
      3. Searches with an opinion of local counsel
    5. Special considerations for design searches?
    6. Other searches
      1. Trade names
      2. Common law searches (e.g., Germany: software titles)
  2. Screening Searches
    1. Supra-National and Regional Databases:
      1. WIPO International Registrations: “Romarin” replaces “Madrid Express”
      2. CTM Registrations
    2. National Databases:
      1. Refer to Search Strategy and compare list of most important countries with those databases available online for searching
      2. Search tools: pro and con, cost effectiveness
        a) Commercial vendors such as CT Corsearch (Advantage Screening) and Thomson Compumark (SAEGIS)
        b) Individual offices: how to find, ease of use, limitations
    3. Is an opinion of local counsel required? helpful?
  3. Clearance Searches
    1. Search Firms
      1. Thomson and Corsearch?
      2. Regional aggregators?
      3. National sources?
    2. Local Counsel
      1. Is it worthwhile to obtain opinion of local counsel?
      2. What do you do with an opinion that says a citation “Could be problematic”?
    3. Follow-up: who and when
      1. Use investigations
      2. Cancellations
      3. Purchase of prior mark
  4. Identifying Other Names and Marks
    1. General search engines
    2. Domain names
      1. Do you find them useful in comprehensive U.S. searches?
      2. DomainTools allows “letter string” searches under certain TLDs
      3. Other services?
    3. Other “common law” resources?


Best Practices in Electronic Discovery — July 16, 2008

With the growing importance of electronic records, managing the preservation and disclosure of documents in litigation has become increasingly complex. Carr & Ferrell Partner Robert Yorio led a two-hour discussion on best practices in e-discovery.

Show Outline

  1. Overview of Rules Relating to Electronic Discovery
    1. Meet & Confer Rules 26(f) and 16(b)
      1. The parties must, as soon as practicable and in any event at least 21 days before a scheduling conference is held or a scheduling order is due confer to discuss any issues relating to disclosure or discovery of electronically stored information, including the form or forms in which it should be produced.
      2. The courts scheduling order may include: provisions for disclosure or discovery of electronically stored information.
    2. Definitions Rules 33(d), 34(a) & 45(a)
      1. Requesting party may examine and copy electronic business records.
      2. Responding party may have to provide technical support or direct access to its electronic information systems.
      3. Adds “electronically stored information” as a category subject to production.
    3. Production 34(b) & 45(a) (c) (d)
      1. Requesting party can specify the form or forms in which it wants electronic information produced.
      2. Responding party can object to the specified form, but...
        a) If it objects to the form, it must state the form in which information will be produced.
        b) Otherwise, if no form is specified, the default is either:
        (1) The form ordinarily maintained in business or
        (2) A reasonably usable form
    4. Dual Discovery Rules 26(a) & 45(d)
      1. A party need not provide discovery of electronically stored information from sources that the party identifies as not reasonably accessible because of undue burden or cost.
    5. Safe Harbor Rule 37(f)
      1. Absent exceptional circumstances, a court may not impose sanctions under these rules on a party for failing to provide electronically stored information deleted or lost as a result of the routine good faith operation of the party’s electronic information systems.
  2. How Should Trademark Practitioners Play by the Rules Before an Infringement Claim Arises?
    The new FRCPs outline additions and changes to electronic discovery. These changes have been discussed previously in many seminars. This discussion is intended to focus on what trademark attorneys should consider when instructing clients on the impact of the rule changes on company policies.
    1. Steps to Consider When Advising a TM Client on the Establishment of a Written E Document Retention Policy
      1. Inventory all electronic devices including peripherals, blackberries, cell phones, PDA’s, voicemail, home computers that belong to the corporation or are connected remotely to the company’s server.
      2. Make a diagram to schematically show connections including how they are backed up.
      3. Document management systems-how are they organized; what kind of reports can they generate?
      4. Identify which software applications auto-delete or overwrite; does the application allow exceptions for confidential or attorney client privileged documents?
      5. Establish search practices to identify all relevant documents and efficiently retrieve them.
      6. What is a legitimate period after which e-documents should timely be destroyed?
      7. Should you have different retention periods for different types or categories of documents?
      8. Does availability on the USPTO Website obviate the need for retention of prosecution documents and related communication prior to registration?
    2. Enforcement of Policy
      1. Determine the appropriate period of time to retain types of docs – TM Applications, evidence of use, discussions regarding first use in commerce etc.
      2. Consistently apply – don’t let employees store e-mails on non-documented devices, or independent storage media.
      3. The policy should provide a mechanism for in-house attorneys to immediately contact the IT Manager of pending or threatened litigation.
      4. One manager should collect and be responsible for retaining or deleting all records.
  3. How Should Trademark Practitioners Play by the Rules After an Infringement Claim is Asserted?
    Communicate to all involved to immediately suspend any deletion of e-mail. If not timely, then good faith or the safe harbor exemption may be lost.
    1. One person (attorney) determines whether the hold can be lifted/put in place.
    2. Litigation Hold Memo should list people, subject matter and the relevant time period. The memo should be sent individually to all relevant people.
    3. The legal hold memo should identify any computer system for which automated deletion of data may be affected by the Legal Hold, and the Legal Hold memo should be delivered to the Information Technology Department.
    4. The Legal Department and the Information Technology Department should jointly determine how best to practically implement the Legal Hold with respect to the automated deletion of electronic data.
    5. The Information Technology Department is also responsible for implementation of the procedures for handling the data of terminated employees that may be subject to a Legal Hold.
    6. Legal Hold Memo must be sent to the records management department to suspend destruction of affected Inactive Records, and to the Department of Records Coordinator(s) of any impacted departments to suspend destruction of department records not in the control of individual custodians.


Internet Domain Names — April 16, 2008

Domain names have become big business, and trademark owners face more challenges than ever in avoiding "cybersquatting" and other brand damaging practices. Carr & Ferrell Partner Jefferson Scher led this two-hour discussion on current developments in the business and law of domain names and trademarks.

  1. Registration and Ownership Issues
    1. What domain names should be registered?
      1. Should all of the primary gTLDs be registered (.com, .net, .org, .biz, .info)?
      2. Should any misspelled or “gripe” domains be registered (e.g.,,
      3. What ccTLDs should be registered, if any, and if so, what about domain names in the local language or characters?
      4. BONUS Q: How best to get ahead of public awareness of new names and marks?
    2. Who does the filing?
      1. Is outside counsel needed for basic registration? For registering new extensions like .mobi?
      2. What is the most efficient way to monitor domain names cropping up on new extensions?
      3. Is it helpful to have foreign associates notify us about similar domain name registrations in foreign countries?
    3. What if a registration lapses?
      1. Does the registrar bear responsibility if it fails to notify about a renewal deadline? What about if an automatic renewal system fails?
      2. If there is an apparent inadvertent failure to renew, is it “bad faith” if someone else attempts to register?
      3. BONUS Q: Who should take responsibility for renewals: client IT, client legal, outside counsel, outside service? Who should monitor “the renewer”? Are any outside services economical for modest-sized portfolios?
    4. How do we calculate a domain name’s value for sale or acquisition?
    5. How should one respond to unsolicited offers received by clients from unknown entities, offering to avoid registrations of marks and trade names as domain names?
    6. BONUS TOPIC: Other acquisition issues
      1. Negotiations: how to contact a seller, particularly if seller is a “domainer”? set up a possible fallback bad faith argument?
      2. Payment/transfer issues: who pays the cost of escrow services? what if the registrar drops the ball and both parties end up with no domain?
      3. Trademark issues: acquire common law rights and goodwill? bar future similar domain registrations?
  2. Chasing Cybersquatters: Arbitration Proceedings
    1. Where To Begin?
      1. What is the best source for researching UDRP decisions? NAF, WIPO, other?
      2. What is the best method for tracking down the registrant? How accurate is Whois, and what is the next step if a Whois search does not reveal the registrant? Should subpoenas be served on the registrar?
      3. ICANN efforts to restrict public access to Whois. How will this affect our ability to protect clients’ marks? Are there alternatives to Whois?
      4. Reverse WHOIS: Helpful information to find domain name warehousers but how do you get it?
      5. Demand Letters: Do they work? Do they alert the registrant to transfer the name? If they don’t resolve the conflict, do they provide evidence of the registrant’s bad faith?
    2. Where To File? WIPO, NAF, or other?
      1. NAF is less expensive; is the quality of the arbitrators any different?
      2. Panel of one or three?
      3. NAF allows an automatic reply brief; replies are discretionary with WIPO. Has this had a big impact on practice before WIPO?
      4. Is WIPO more efficient for European clients?
  3. Chasing Cybersquatters: Lawsuits
    1. Anticybersquatting Consumer Protection Act (ACPA)
      1. Overview of recent decisions and experiences.
      2. Cost/benefit analysis of the rewards and remedies in ACPA suits. Do the statutory damages provide sufficient deterrent?
    2. Digital Millennium Copyright Act (DMCA)
      1. Using the DMCA notice/demand to deactivate websites during (or in lieu of) UDRP and ACPA proceedings if the name is used to access a site containing a corporate logo or other copyrighted works.
  4. BONUS TOPICS: Related Issues
    1. Keyword-driven Search Engine Advertising (e.g., Google AdWords)
      1. Cost-effective approaches for trademark owners?
    2. Fraud including Phishing
      1. How to balance protection of customers and law enforcement’s need to investigate?


Trademarks in Business Transactions — January 24, 2008

A well established brand is the most valuable property in many acquisitions — and simultaneously, the most fragile and complex to value. Failure to conduct appropriate due diligence, errors in documenting the transfer, and misunderstanding of the law may undermine efforts to capitalize on an acquired mark. Led by Carr & Ferrell Partner Jefferson Scher, the two-hour discussion was on best practices for handling trademarks in business transactions.



Advanced TTAB Practice and Procedure — July 26, 2007

The Trademark Trial and Appeal Board (TTAB) hears challenges to trademark applications and registrations in the United States Patent and Trademark Office. Rule revisions designed to streamline and expedite proceedings present new challenges. Carr & Ferrell Of Counsel attorney Joi White led this two-hour discussion on advanced practice and procedure before the TTAB in a changing environment.