WIPR_CheckMark_June_2016

IN THE SPOTLIGHT
CheckMark Network
helps brand owners
to protect their
trademarks online by
watching for infringing
registrations in a range
of places, as president
Mark Kudlacik
tells WIPR.
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F
ifteen 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
World Intellectual Property Review May/June 2016
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
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CheckMark
Network:
eyes everywhere
IN THE SPOTLIGHT
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
www.worldipreview.com
“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.”
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.
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61
“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
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in domain names, CheckMark’s monitoring is
based purely on a “trademark use perspective”
and not what Kudlacik describes as “textual
references”.
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.
World Intellectual Property Review May/June 2016
“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.
www.worldipreview.com
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IN THE SPOTLIGHT
IN THE SPOTLIGHT
“WE WANT TO SHOW
CLIENTS THAT THEY
DON’T HAVE TO
REGISTER IN MULTIPLE
JURISDICTIONS; YOU CAN
JUST MONITOR FOR USE
INSTEAD, WHICH IS A LOT
MORE COST-EFFECTIVE.”
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
www.worldipreview.com
to take action, for example sending a cease-anddesist 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 “industryspecific 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. n
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