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Trademark Investigations Revisited

BY James H. Sullivan
February 01, 2007

The use of investigations to uncover and evaluate potential infringement and unfair competition claims can be an extremely effective weapon for any trademark owner. Usually, a key to successful trademark investigations rests in having the mark owner's investigator pose as an ordinary consumer ' essentially misrepresenting his or her true identity or purpose to the potential infringer. This practice of attempting to gain information through the arguable use of deception or invented scenario is now commonly referred to as 'pretexting' and has led to controversy in the general corporate context. This article concludes that properly conducted and supervised pretext investigations remain in harmony with both the relevant case law and the policy goals of trademark and unfair competition law.

Considerations in Utilizing Pretext Investigations

Pretexting practices employed in trademark infringement investigations differ from other investigations in that they typically only seek to obtain information that would tend to be available to any ordinary customer of the infringer. Thus, the methods employed by trademark investigators tend to mimic consumer interactions by, inter alia, posing as a customer seeking the potential infringer's goods or services through telephone calls or visits to the infringer's business, or through the simple purchase of the products or services at issue. It is significant, therefore, that when a trademark owner employs such deception, the ultimate goal of the investigation is strictly in line with the same broad policy goals that underlie all trademark and unfair competition law ' namely, consumer welfare. The trademark owner can justify its investigative pretext as necessary to protect the consuming public from deception or confusion in the marketplace, protection that can only be accomplished by stepping into the shoes of the ordinary consumer.

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