Counterfeits In The U.S.A.

Counterfeits in the U.S.A. Unfortunately, that's not a parody of John Mellencamp's classic song R.O.C.K in the U.S.A., but rather a growing problem. And your business needs to take action to mitigate the risks to its brands.

For a long time, conversations about counterfeiting have focused on what happens overseas, not just in terms of where fakes are manufactured, but (to a considerable degree) also on where counterfeits are sold. To be sure, the risk of pirated goods made in, say, China, making their way to the United States has always been there. But the risk of counterfeits ending up in countries with less robust anti-counterfeiting frameworks is of course greater, and these countries are increasingly becoming markets for U.S. and other international brands.

Until recently, the open sale of counterfeits in the United States was largely limited to New York City sidewalks, flea markets and similar spots. But earlier this week I saw counterfeit goods (most notably soccer jerseys) being brazenly sold at a mall in Florida. And in case you're wondering, I mean a regular mall, the kind with a JCPenney and a Chick-fil-A, not some overhauled, past-its-prime shopping center catering to a particular community, as you see in some larger U.S. cities.

There are probably several factors at play here, one of which is the increasing ease with which goods can be procured across borders. Thanks to all the technology we now enjoy, a budding criminal entrepreneur in Florida (and pretty much anywhere else) can easily connect with a factory in China (or elsewhere) that can send them fakes via small packages that can blend in with the tens of thousands of similar packages that arrive in the United States every day.

Meanwhile, the same brands that commission surveys of malls in places like Shanghai and Ho Chi Minh City are likely not sending investigators to "nice" malls in the United States. This creates an environment where petty instances of counterfeiting go unnoticed by the brands, let alone punished.

Your exact plan of action to protect your IP in the United States will vary, depending on the particularities of your brand, but here are some basic steps that every company should be considering:

1. Register Your Trademarks With a U.S. Trademark Lawyer

Registering your trademarks is a crucial first step in protecting your brand. To begin, identify the unique names, logos, slogans, and other brand identifiers you use in commerce. Then conduct a thorough trademark search to ensure no existing trademarks conflict with your desired registration. Once confirmed, file a trademark application with the U.S. Patent and Trademark Office (USPTO). This process involves submitting a detailed description of the trademark, how it's used, and paying the required fees. After submission, your application will be reviewed by a USPTO examiner, who may request additional information or clarification. If approved, your trademark will be registered, providing legal protection and exclusive rights to use the mark nationwide. And if you cannot register a particular trademark, identify it as your (unregistered) trademark with a TM symbol.

When registering a trademark in the United States, using a qualified trademark lawyer is usually necessary for navigating the complexities of the process. A trademark lawyer brings expertise in conducting comprehensive trademark searches to identify potential conflicts and in drafting applications that accurately capture your brand's unique elements. This expertise is vital because the U.S. Patent and Trademark Office (USPTO) has strict requirements and expects precise, well-supported applications. An experienced trademark lawyer can anticipate potential challenges, respond effectively to objections from USPTO examiners, and ensure that your application has the best chance of approval. Moreover, should any legal disputes arise over the use of your trademark, having a lawyer who understands the intricacies of trademark law can provide a significant advantage.

For foreign companies seeking to register trademarks in the United States, working with a U.S.-licensed trademark lawyer is not only advisable but mandatory. The USPTO requires all foreign-domiciled applicants be represented by an attorney licensed to practice law in the United States, to ensure that all filings are made in accordance with U.S. trademark laws and that the USPTO receives clear and professional communications.

It is also important to note that while the USPTO does not maintain an official list of "untrusted" lawyers, applications submitted by attorneys with a history of non-compliance or problematic applications may face increased scrutiny. Therefore, selecting a reputable and experienced trademark attorney with a strong track record of compliance and successful filings can improve the likelihood of your application being approved without unnecessary delays or complications.

2. Conduct a U.S. Trademark Search Before Filing Your U.S. Trademark

Before filing your trademark application, it is often essential that you conduct a comprehensive search to ensure that your desired trademark is not already in use or registered by another entity. While the USPTO provides a basic search tool, an understanding of trademark law and practice is necessary to make the most of it. A trademark lawyer can perform a more thorough search, also looking at common law (unregistered) trademarks and state trademark registrations, to identify any potential issues that could lead to a refusal or opposition. This proactive step can save time and money by reducing the risk of disputes or rejections down the line.

3. Register Your Copyrights

Securing your U.S. copyrights can also be a crucial tools for protecting your brand elements, such as artwork and toys. In the United States, trademarks protect brand names, logos, slogans, and other distinguishing features that identify your products or services. By registering your trademark, you establish exclusive rights to use the mark and prevent others from using similar marks that could confuse consumers.

Copyrights, on the other hand, protect original creative works, such as artwork, designs, and music. By registering your copyrights, you establish a public record of ownership, making it easier to prove your rights in case of infringement. This can be particularly important for businesses that rely on creative content to differentiate themselves in the marketplace. Without United States copyright registration, you can face challenges in proving ownership and enforcing your rights in court. Additionally, you may lose the ability to seek statutory damages, which can be higher than your actual damages.

4. Work with U.S. Customs and Border Protection (CBP)

Once you have registered your trademarks and copyrights, record them with U.S. Customs and Border Protection. This allows U.S. customs officials to monitor imports for incoming goods that infringe your products and to take action to stop counterfeit products at the border. To do this, you need to provide detailed information about your registered intellectual property, including images, descriptions, and any unique identifiers that would help customs officers identify counterfeit goods. Regularly update this information and maintain open communication with CBP to ensure they have the latest details about your brand. Consider partnering with a customs attorney or intellectual property specialist who can assist with the recording process and advise on best practices for monitoring and enforcement.

5. Consider International Trademark and Copyright Protection

If your business operates or plans to operate internationally, it's wise to consider registering your trademark in other countries where you conduct business or where you anticipate future growth. The Madrid Protocol allows for the filing of international trademark applications, streamlining the process of obtaining trademark protection in multiple jurisdictions. However, the process and requirements vary significantly from one country to another, so working with international trademark lawyers who understand international law is crucial. They can guide you through the complexities of international applications, help determine the best strategy for global protection, and coordinate with foreign counsel where necessary.

6. Monitor and Enforce Your Trademarks and Copyrights

Registering your trademarks and copyrights is just the beginning; active monitoring and enforcement help to maintain their strength and exclusivity. Regularly monitor the market, including online platforms, to detect unauthorized use of your trademarks. Automated IP watch services can alert you to potential infringements, but manual checks of online marketplaces, social media, and domain registrations are also beneficial. When infringements are detected, prompt action is necessary to prevent dilution or loss of your IP rights. This may involve sending cease-and-desist letters, pursuing legal action, or negotiating settlements.

Many online platforms, such as Amazon, eBay, and Alibaba, offer brand protection programs designed to help rights holders protect their trademarks from counterfeiters and infringers. These programs typically provide tools for reporting and removing listings that violate IP rights. Enrolling in these programs and taking advantage of the available tools can enhance your ability to enforce your IP online effectively. Additionally, consider using specialized software that monitors online platforms for trademark infringements and automates the process of issuing takedown notices, saving time and reducing the burden of manual monitoring.

7. Renew and Maintain Your Trademarks and Copyrights

Both trademarks and copyrights require ongoing attention and maintenance to ensure their continued validity and legal protection. In the United States, trademarks must be maintained periodically to remain in effect. The first maintenance is required between the fifth and sixth year after registration, with renewals then due every ten years. At each of these steps, trademark owners must also file a Declaration of Use, which proves that the mark is still actively used in commerce. Failing to renew or provide this proof can result in the cancellation of the trademark, potentially allowing competitors to use or register a similar mark. To prevent losing these valuable rights due to missed deadlines or administrative errors, it is crucial to track these deadlines carefully and collaborate with a trademark lawyer to ensure timely filings.

For copyrights, while there isn't a periodic renewal requirement in the same way as trademarks, there are still important steps you should take to maintain and enforce your rights effectively. Copyrights in the United States automatically protect original works of authorship as soon as they are fixed in a tangible medium of expression, such as written works, music, art, or software code. However, registering your copyright with the U.S. Copyright Office provides additional legal benefits, including the ability to sue for infringement and to potentially recover statutory damages and attorney's fees. Once registered, it's important to monitor the market for unauthorized use or reproduction of your copyrighted works.

Furthermore, while copyright protection generally lasts for the life of the author plus 70 years, or 95 years from publication (or 120 years from creation) for corporate authors, it's critical to enforce these rights actively. This involves keeping accurate records of your works and registrations, monitoring for potential infringement, and taking timely legal action when necessary. Regularly review your portfolio to ensure all valuable works are registered and consider updating registrations when significant changes or new versions of the work are created.

Conclusion

Counterfeiting is no longer a problem confined to distant shores; it is an immediate and growing threat within the U.S. market itself. As counterfeiters become more sophisticated and brazen, it is imperative for businesses to strengthen their defenses and take proactive measures to protect their brands. By registering your trademarks and copyrights, engaging with U.S. Customs and Border Protection, and actively monitoring the market, you can establish a robust defense against counterfeit goods and minimize the risks to your business.

But remember, brand protection doesn't end with registration. It's an ongoing process that requires vigilance, strategic planning, and sometimes, swift legal action. Staying ahead of counterfeiters means continually updating your strategies, leveraging new technologies, and remaining aware of changes in the market and legal landscape.

Don't wait until you're faced with counterfeit goods flooding the market. Act now to safeguard your brand and ensure its longevity and success.

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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.