7 June 2016Trademarks

CheckMark Network: eyes everywhere

Fifteen years ago, a trademark and domain name watching service was launched that revolutionised the industry.

When CheckMark Network started in 2001 it was the first company to deliver information electronically on potential infringement to brand and intellectual property owners. Gone were the days when reams of paper would appear on brands’ desks informing them of infringement.

Today, CheckMark is still going strong and has adapted to the times through continuous innovation.

“The way things are happening as far as infringement is concerned has changed,” says Mark Kudlacik, the company’s president.

“There are more marketplaces, more social media sites, more outlets and things are happening faster so brand owners are forced to be more vigilant. Infringement is getting quicker and quicker,” he says.

Watch out

CheckMark prides itself on its watching services: traditional trademark monitoring, as well as trademark usage in domain names, on websites, across social media, online marketplaces and also mobile apps.

For example, as few will need reminding, the domain name industry has undergone huge changes since CheckMark arrived on the scene.

The launch of the new generic top-level domains (gTLDs), which began going live in 2014, gave companies the chance to register their name in a host of new strings, as well as applying for their own personalised ‘dot brand’ domain.

With thousands of new strings to protect themselves in, some brands were encouraged to register their names in multiple places to ensure they were protected from potential infringement. But not CheckMark.

“Our speciality is watching,” says Kudlacik.

“A lot of companies would recommend registering ten or 15 variations of a domain and in every jurisdiction, but it’s too easy to get around infringement and create a new domain. You can just change the spelling, or put a hyphen in the domain, so it’s almost impossible to register every single variation,” he adds.

“We want to show clients that they don’t have to register in multiple jurisdictions; you can just monitor for use instead, which is also a lot more cost-effective.”

The rise of gTLDs

Kudlacik explains that the watching service looks out for identical and confusingly similar newly registered domains as well as use of a trademark in prefixes, suffixes, or mid-word.

Although new gTLDs are coming out a faster pace than before, they are not a new phenomenon.

As Kudlacik says, the most-recent rollout is “continuing a previous trend”. He references the launch of .info and .biz (both in 2001) as examples of an early growing domain system.

“The main difference is that people were perhaps more concerned about registering back then,” he says.

“Now there are so many being rolled out that people are more inclined to monitor rather than register in say 500 new gTLDs.

“Brands that are online-centric are concerned about any online presence, while other brands are more interested in registering in certain gTLDs that are relevant to their business. They may avoid registering in others—but for those domains that they do not choose to register in, they can still monitor them.”

The force of social media

One of the other major changes in the last  few years has been the increase in social media and online marketplaces—and with this comes an increase in instances of infringement.

Much like its work with detecting infringement in domain names, CheckMark’s monitoring is based purely on a “trademark use perspective” and not what Kudlacik describes as “textual references”.

“We want to show clients that they don’t have to register in multiple jurisdictions; you can just monitor for use instead, which is also a lot more cost-effective.”

Kudlacik explains: “If someone posts a tweet that says ‘Just had a great cup of Starbucks coffee’, we would not find that or pass it onto the client because that’s more of a sentiment. But if someone uses a Twitter handle that has a famous brand name, then that is something we would find, as it’s a trademark-centric use of social media. We use that approach with everything that we do. We provide our clients with the data they require to determine if there is an actionable infringement and act on it.”

Social media and online marketplaces yield different kinds of infringement, Kudlacik says.

“When you are dealing with social media there’s a chance that an account or a page may lead to a sales site, but there is also the chance that someone is purely using a name that may not be nefarious.

“However, with marketplaces you are often talking about products and sales, so there will be specific concerns about counterfeits.”

Logo misuse

A service that CheckMark launched last year allows for image watching, something which other providers are currently “not able to do”, according to Kudlacik.

Instead of purely searching for use of a mark in a domain name or online, this allows Checkmark’s researchers to spot infringing uses of a company’s logos.

Instances could include someone using a logo on a website that is not authorised or an avatar that contains a brand’s logo.

Kudlacik explains: “Often we find that an image can actually be worse than using a word trademark. Many people will use a word trademark while describing something, but in the majority of cases you can’t use a logo unless you are authorised to do so.”

Although it prides itself on offering fast, up-to-date information on instances of infringement, CheckMark is also keen to stress that it is not inclined to take direct action itself or even advise its clients to.

“We are not a law firm,” says Kudlacik.

“Our experts look at the data, filter it for clients and turn it over to them. Our tools allow clients to take action, for example sending a cease-and-desist letter, but we don’t send it ourselves and we leave that up to the client. We provide them with the information that they need so they can decide whether or not there is an infringement.”

Keeping pace

In the 15 years since the company was founded, many of its clients will have expanded their outreach and started making their products available all over the world.

Kudlacik says it is important that the company stays up to speed with the
“global nature” of trademarks and that while its researchers primarily focus on the
US and Europe, “every market” is covered.

“We have researchers who have specific knowledge of certain jurisdictions and who do work for us in different parts of the world.”

He adds that “Asia and China in particular” are problematic but that there are also “industry-specific problems” throughout the world.

“Some online market places are more popular in South America than in the US, so things differ according to jurisdiction,” he says.

Since changing the industry 15 years ago by switching to a digital format, CheckMark has seen various developments. Social media and online marketplaces have created ample opportunities for infringers to pounce and the roll-out of the new gTLDs means infringement can be harder to detect.

But CheckMark is determined to help. Here’s to the next 15 years.

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