How to Learn to Think Outside the Box

A few years back our litigation team was faced with a seemingly insurmountable task: how to defend our client’s trademark rights against a Fortune 100 Company with a massive litigation budget. They had the facts on their side. They had money. And worst of all, they had a gaggle of lawyers that just made the case down right unpleasant. But as luck would have it they were missing one thing they had never learned in law school. Something big firm life had failed to teach them. Quite simply they were limited in their thinking as to that which was and not that which could be.

Looking beyond conventional defense methods we deconstructed every element of the case until we discovered a plan to turn the tables. In trademark law priority of use is everything. Whoever is the first to use a specific trademark typically wins an infringement case, especially were the trademarks and the goods and services of the parties involved are very similar if not identical. Well, the other side had priority of use. The trademarks were very similar. The services almost identical. Might as well just throw in the towel, right? Wrong!

In thinking beyond traditional defenses, we questioned what if we could find someone else who had priority of use over them over their own trademark? What if we could find this mythical entity and purchase their rights to their trademark acquiring their earlier priority rights to those of our opponent? Could it work?

Well, not only could it, it did. After a brief search we found a small company in a Midwestern state that miraculously had been using the same trademark as our opponent for more than 50 years. They were considering closing their business already when we arrived and bought them out for a fraction of what it would have cost to defend the case in court. Acquiring their trademark rights with priority of use before our opponent that gaggle of lawyers quickly moved from shooting at we fish in the barrel to being the fish in the barrel. The case settled within days.

How did we do it? How can you? When you are faced with losing a game you have to change your perspective. You have to change the game itself.

People often speak about thinking outside the box but how do you really do it? What does it mean to be limited to inside the box as opposed to being outside? The key is to define the box in any given situation and then to seek alternative, unconventional solutions that would be considered beyond the norm.

When you are faced with a seemingly insurmountable obstacle train yourself not merely to focus on the specific issue at hand but to think more expansively about all of the reasons and the paths that lead to the issue. Consider every possibility and hypothetical alteration of that reality along the path never being dismissive of anything and a new solution often arises. Here are a few tips we have learned along that have aided us in getting outside the box:

1. Identify the issue.

2. Determine whether a regular or typical solution to the problem exists.

3. If one does, you’re done. If no, map out everything that went into creating the
issue. In this aspect, be expansive. Include everything possible.

4. Once you start mapping out the issue more completely start looking for ways to
address the situation in one of the more outlying areas that was not considered
previously.

5. Never dismiss a possible solution on the basis “It just cannot be done.” Go
through it repeatedly until you know for a fact it can or cannot be done.

This is exactly the way we won the case referenced above. If we thought inside the box our thinking would have been:

1. Can we defend on the grounds the trademarks are not similar? No.

2. Can we defend on the grounds the trademarks are used on different services? No.

3. Do we have priority of use? No.

But in thinking outside the box we began looking at how did the opponent acquire their trademark rights they are asserting against us now? Could we acquire trademark rights that are superior to theirs? We could if there was another company out there using the same trademark as opponent before they did that would sell it to our client for a reasonable price. Well, let’s see if we can find one. And we did.

Teach yourself to look at problems more expansively. Never be dismissive of a potential solution before you have thought it through. Think outside the proverbial box.

The Trademark Company

3 Things to Consider Before Filing a Domain Name Dispute

We are often asked what our customers can do when someone else begins use of a domain name that is similar to their trademark(s) and, as a result, web site traffic – and business along with it – is being stolen by a new, competing new web site. In many instances the answer is clear: Initiate a Domain Name Dispute against the owner of the new site.

How is this done? The answer is simpler than you may believe.

Most domain names, including the ownership thereof, are controlled by the Internet Corporation for the Assignment of Names and Numbers or ICANN. By registering a domain name with any approved domain name registrar (e.g., GoDaddy.com, Register.com, etc.) the registrant of the domain name is required to agree to ICANN’s Uniform Domain-Name Dispute Resolution Policy or UDRP.

The UDRP allows you to enforce your trademark rights against registrants of confusingly similar domain names and force them to transfer those domain names to you where:

(1) the domain name is identical or confusingly similar to your trademark;

(2) the domain name owner has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Having successfully prosecuted domain name disputes in our experience here are the three (3) questions you should ask when considering whether you should initiate a domain name dispute against the registrant of domain name you feel is likely to cause confusion with your trademark:

(1) Trademark Rights. Did you have rights in your trademark through use, a Trademark Application, or a Trademark Registration, prior to the other person’s registration of the domain name at issue? If yes, continue to inquiry number 2. If no, you generally cannot maintain a Domain Name Dispute against the other party.

(2) Legitimate Interest. Does the owner of the domain name have some legitimate interest in respect to the domain name (e.g., the domain name owner is commonly known by the domain name even if they have acquired no trademark rights therein, the domain name is being used for legitimate non-commercial use)? If the answer is no continue to inquiry number 3. If the answer is yes you generally cannot maintain a Domain Name Dispute against the other party.

(3) Bad Faith. Was the domain name at issue registered and is it being used in bad faith (e.g., registered primarily to sell the same for a profit (aka domain name trafficking), to disrupt the business of a competitor, to divert customers away from a competitor by creating confusion with their trademark)? If the answer is yes you may be able to successfully maintain a domain name dispute against the other party and have the disputed domain name transferred to your ownership.

As always, a fact-specific analysis of your rights vis-à-vis the alleged cybersquatter should be conducted by someone experienced in the field. However, the above-referenced information should give you a fairly simple overview of whether enforcement may be possible if another registers a domain name which is confusingly similar to your trademark.

The Trademark Company