Strategies to Protect & Grow Your Brands in a Down Economy. Gretchen M. Olive Director, CSC Global Brand Advisory Team ACC Baltimore May 5, 2009

Transcription

1 Strategies to Protect & Grow Your Brands in a Down Economy Gretchen M. Olive Director, CSC Global Brand Advisory Team ACC Baltimore May 5, 2009

2 About the Speaker Gretchen M. Olive Director, CSC Global Brand Advisory Team Over the last 8 years, Gretchen has helped Global 2000 companies devise global domain name, trademark and brand protection strategies to protect their corporate identity and is a leading authority on the Internet Corporation for Assigned Names and Numbers (ICANN) New gtld Initiative. Ms. Olive is currently serving on the following committees that are focused on the preservation and protection of Intellectual Property Rights, as well as Consumer Safety on the Internet: INTA Registration & DNS Subcommittee of the INTA Internet Committee ICANN Registration Abuse Policy Working Group (RAPWG). Ms. Olive, who earned her JD from Widener School of Law, is frequently asked to speak and write on issues related to domain names, trademarks and online risks to brand owners. She has recently been published in Trademark World Magazine, Managing Intellectual Property Magazine, 8k Magazine and The Metropolitan Corporate Counsel.

3 Agenda Current Trends 2009 Global 2000 Priorities Strategies Q&A

4 Trademark Filing Trends 2008 Total Trademark Application Filings at USPTO 2005: 323, : 354, : 394, : 401, Apps Filed 2008 Trademark Application Abandonments at USPTO : 108, : 126, : 129, Apps Abandoned 2008: 156,

5 Trademark Renewal Trends Total 2008 Trademark Registrations Renewals at USPTO 2005: 32, : 37, : 47, : 42, Renewals Total Active Certificates of Registration at USPTO as of 12/31/ : 1,255, : 1,322, Active TMs 2007: 1,380, : 1,497,

6 Domain Name Trends 177 million domain names registered as of 12/31/08 16% growth over % gtlds (106M) 40% cctlds (71M) New registration rate of growth overall slowed in M new registrations per quarter in 2008 vs. 12.2M per quarter in 2007 cctlds growing at faster rate than gtlds

7 Domain Name Trends Top 10 cctlds account for 65% of all cctld registrations Top 3 cctlds account for 47% of all cctld registrations In 4 th quarter of 2008, of the Top 25 cctlds,.ru experienced the highest growth rate quarter over quarter (11%), with.cn being the next highest at 8%

8 Renewal Rates.COM/.NET renewal rates dropped below 74% for the 1 st time since 2005 Likely cause is new Domain Tasting Policies

9 Corporate Portfolio Trends Average Portfolio Size of Global 2000 Company is 1800 names Typical TLD Breakdown 85% gtlds/15% cctlds Seeing higher rate of growth in cctlds because of continued cctld liberalizations and companies trying to expand into new markets using online channels in this soft economy Corporate renewal rates in.com/.net are typically around 98% Starting to see increased lapsing of defensive registrations in gtlds, particularly in.info and.biz cctld renewals are remaining steady Companies are registering less names during new TLD launches protecting Tier 1 TMs/brands Seeing increase in companies monitoring TMs and brands in domain name registrations and taking enforcement action

10 Brand Infringement Trends CSC analyzed over 151,000 domain names containing a brand name 23% of analyzed registrations belonged to brand owners 77% of analyzed registrations belonged to 3 rd parties Domain Name Registrant Total 3 rd Party 100,827 Brand Owner 30,008 Total: 131,000

11 Brand Infringement Trends UDRP Filings WIPO Reports 8% increase (2329 cases) NAF reports 2% decrease (1770 cases from 1805) Counterfeiting Counterfeiting costs U.S. businesses $200 billion to $250 billion annually. Counterfeit merchandise is directly responsible for the loss of more than 750,000 American jobs. Since 1982, the global trade in illegitimate goods has increased from $5.5 billion to approximately $600 billion annually. Approximately 5%-7% of the world trade is in counterfeit goods. Phishing/Malware Seen 63% increase in Internet threats over the last 6 months

12 So what does this all mean? Brands are under attack and being used as vehicles for Fraud Tight Budgets are changing behaviors It s no longer about Doing More with Less, but Doing Enough with Less What is Your Plan?

13 What Global 2000 Companies are Doing 2009 Brand Priorities: Expand brand and bottom-line, while reducing risk & costs Reduce Trademark Spend Prioritize & Streamline Enforcement Efforts

14 Priority 1 - Expanding Brand & Bottom-line, while Reducing Risk & Costs Get a Strategy Bring Legal, Marketing, IT and other business stakeholders together and build a consolidated strategy to secure, promote and protect TMs/Brands/Domains. Not all TMs & Brands are created equal. Develop a written policy that encompasses all avoid working in silos. SILOS = WASTE/COST Benchmark Numbers don t lie Gather data and develop performance analytics (web traffic, web conversion, product & market revenue, licensing royalties, infringement data) Build metrics that calculate the ROI on each domain, trademark and brand you own. Report results! Phase out Poor Performers & Fill Gaps Gather/review Corporate Business & Product Plans and make sure you make decisions in context

15 Priority 2: Reduce Trademark Spend Implement Tiered TM/Brand Strategy Written policies should define who, what, where and when for each tier Consolidate Filings (CTM, Madrid protocol) Foreign Counsel Vendors Educate internal business partners about brand extension vs. new brand launch Leverage House Marks to avoid need for new trademarks Explain need to scrutinize Purpose and Duration vs. Cost Screen In-house Only do comprehensive searching after extensive screening Avoid outsourcing screening to law firm Get more from trusted Vendors & Small Law firms Save big firms/partners for tough/high-stakes matters

16 Priority 2: Reduce Trademark Spend (continued) File for word mark only as opposed to also filing for design marks Find Administrative gains Eliminate Expediting fees Order Electronic vs. paper reports and utilize workflow platforms to improve collaboration during review

17 Priority 3 - Prioritize & Streamline Enforcement Efforts Define What Matters Impossible to enforce against everything make sure your policy defines what type of infringement and markets that are of the highest concern. Prioritize monitoring Look for economies of scale in enforcement efforts When enforcing against infringers, try to bundle multiple infringements by 1 infringer under 1 action (i.e., UDRP) Leverage vendors to take care of administrative aspects of enforcement efforts (data collection, workflow management, template notice generation, administrative filings like VeRO and Search Engine TM Claims. Eliminate manual monitoring and data dumps Think like and infringer and be proactive Push infringers to the edge of their ROI and they will move onto another brand infringers like quick, cheap and easy! Cheaper to get than recover!

18 About CSC Privately-held, 108 year old company headquartered in Wilmington, DE CSC operates offices in the US, Canada, Germany, France and the UK and employs over 1,000 people worldwide CSC is dedicated reducing risks and costs for our clients by providing: Corporate Identity Protection Services Corporate Governance & Compliance Services Litigation & Matter Management Services Deal & Transaction Support Services CSC is the trusted partner of more than 50% of the 100 Best Global Brands, including 3 of the Top 4, for global domain name registration & management

19 Thank You Please visit us at: For more information about CSC s Corporate Identity Solutions, please contact: Neal Smith x3490 nsmith@cscinfo.com