Practical Ecommerce

Legal: Protect Your Brand from Counterfeiters

This is the second installment in a two-part series regarding protection against counterfeit products being sold on the Internet. In the first installment, “Legal: When Merchants Are Liable for Selling Counterfeit Brands,” I wrote how online retailers and auction houses can protect themselves from unknowingly selling counterfeit products. This second installment discusses protecting your product or website brand from being counterfeited.

Although protecting your company’s brand from counterfeiters seems like a daunting task, there are some steps every company with an established brand should take. Even if you cannot completely shut down the counterfeiter’s operations, your actions could make it difficult enough that a counterfeiter would move on to an easier target. Here are some suggested actions to protect your brand.

File for Trademark Registration

Registering trademarks can provide many benefits in the pursuit of counterfeiters. In the United States, the U.S. Patent and Trademark office maintains and approves valid trademarks. Once the mark is registered, you are presumed to be the owner of the mark, and have the exclusive right to use it in connection with the goods and services listed in the trademark registration. This means that if you enforce your rights to use the mark against a counterfeiter, a court will require the party challenged to prove that you are not the rightful owner. Also, you may be able to get triple damages and attorney fees for clear, intentional violations.

Some countries require registration in order to enforce rights in a brand. If you want to protect your brand in countries outside the United States, you should investigate the requirements to protect in such country. Many countries have agreements with the United States that allows a single application for registration to cover multiple countries. However, each country has its own fee structure and does its own review of the application. Small companies may need to simply select the most important countries in order to keep the cost of registration down.

Once the trademark is registered you should record your brand with U.S. Customs. This puts Customs officials on notice of your claim to your brand, and allows them to assist you in protection of illegal products coming into the U.S. Other countries have similar agencies and officials.

Constantly Monitor Your Competition and Product Sources

You should continually review what products are available in the market and who is selling them. You may find sources that are advertising products for sale under your brand. Also, notify your employees and distributors to be on the lookout for knock-off products or products that try to imitate your brand. You should remember that a knock-off does not necessarily have to be exactly the same as your brand, but just cause confusion by customers as to the source of the product. You should search Craigslist, eBay, Alibaba and similar websites for products that might be counterfeit.

Enforce Your Rights

If you consistently work with officials to enforce your rights and take action against counterfeiters when they are caught, the counterfeiters will most likely migrate to other products where the companies are not as aggressive in their brand protection. Although civil litigation can get expensive, there are other avenues small businesses can take outside of a civil lawsuit to assure Customs officials are not wasting their time. In some countries it may be as simple as filing forms to confirm that the goods seized by Customs officials are counterfeit, or working with officials on a criminal prosecution of the counterfeiter. The more active you are in enforcement of your rights, the more you will deter a counterfeiter from knocking-off your brand.

Summary

These suggestions are hardly an exhaustive list of ways to combat counterfeit brands. But taking these actions will help your business be prepared if and when it discovers a counterfeit product on the market. Consistency is the key to a successful campaign against counterfeit products. Discussing protection of your intellectual property with your employees and distributors, and implementing written policies regarding such protection, will help your team understand what to look for and what to do when they find a counterfeit product.

Jeff Jacobson, Jd, Llm
Jeff Jacobson, Jd, Llm
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