Protect Your Brand from Counterfeiters

This is the second installment in my two-part series regarding protection against counterfeit products. In the first installment, “Legal: When Merchants Are Liable for Selling Counterfeit Brands,” I addressed how online retailers and auction houses could 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 steps every company with an established brand should take. Even if it cannot completely shut down the counterfeiter’s operations, your action could make it difficult enough that a counterfeiter would move on to an easier target.

Here are some suggested steps to protect your brand.

File for Trademark Registration

Registering trademarks can provide many benefits in the pursuit of counterfeiters. The U.S. Patent and Trademark Office maintains and approves valid trademarks. Once the mark is registered, you are presumed to be the owner and have the exclusive right to use it in connection with the goods and services listed in the registration. This means that if you enforce your right 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 obtain triple damages and attorney fees for intentional violations.

Some countries require registration to enforce rights in a brand. Investigate the requirements for each country. Many have agreements with the United States that allows for a single trademark application. However, each country has its own fee structure and does its own review of the application. Small companies may need to select the most important countries to keep the cost of registration down.

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

Monitor Competitors and Product Sources

Continually review what competing products are available and who is selling them. You may find sources that are advertising products for sale under your brand. Also, ask employees and distributors to look for knock-off or imitation products. Remember that a knock-off does not have to be exactly the same as yours, only that it confuses consumers as to the source of the product. Search Craigslist, eBay, Alibaba, and similar sites for products that might be counterfeit.

Enforce Your Rights

If you consistently work with officials to enforce your rights and take action when necessary, counterfeiters will likely migrate to other products where the companies are not as aggressive. There are avenues small businesses can take outside of expensive 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 seized goods are counterfeit or otherwise working with officials on a criminal prosecution. The more active you are in the enforcement of your rights, the more you will deter a counterfeiter.

Preparation Is Key

These suggestions are hardly an exhaustive list of ways to combat counterfeit brands. But the actions will prepare your business if and when it discovers a counterfeit product. Consist protection practices are the key to a successful campaign against counterfeiters. Discuss protection of your intellectual property with your employees and distributors, and implement written policies. Both will help your team understand what to look for and what to do when they find a counterfeit item.

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