December 06, 2011

How to Stop Trademark Counterfeiting

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

This is Brian Hall, a trademark attorney with Traverse Legal, PLC, a law firm representing both plaintiffs and defendants throughout the world in trademark litigation matters.  Today, I will be answering the question of how to stop trademark counterfeiting. 

Trademark counterfeiting is really a growing problem in the United States mostly because of the proliferation of the internet where goods and even services can be made and put for sale for consumers to buy without knowing whether or not it is, indeed, the actual product or a counterfeit.  So what can someone that owns a trademark on their product or service do in order to stop counterfeiting? 

Well, it starts with first understanding what is counterfeiting.  Counterfeiting is essentially when a trademark is used in such a way that is identical to or substantially indistinguishable from a registered trademark, and there’s a couple important points there.  The first is that it’s a registered trademark.  And this goes to one of the ways that trademark owners can help prevent and give themselves the most beneficial remedies in the event of counterfeiting and it starts with trademark registration, and that trademark registration is with the United States Patent and Trademark Office (USPTO). 

So, any trademark owner that’s claiming rights in a particular mark or service should seek trademark registration.  Once that trademark is registered, there’s even an opportunity to file for protection with the U.S. Customs and Border Protection, which is bureau of the Department of Homeland Security that maintains a trademark recordation system for marks registered at the USPTO.  This system will help eliminate some possibilities of counterfeiting.  However, it is not all inclusive. 

Any trademark owner should also be well served by monitoring what other uses are out there of its trademarks, and with the internet today, this is more possible than it was in the past.  A trademark owner should be performing Google or other search engine searches for its mark on its goods or services to see what else is out there.  If they identify unauthorized identical or similar uses of their trademark on these, then counterfeiting truly is an issue that they need to address.  So, the next question is how do they address it?  And really, there are multiple options there with the most common being filing for a lawsuit.  And a trademark counterfeiting lawsuit really proceeds in federal court under the Lanham Act where there are provisions dealing with trademark counterfeiting and giving the trademark owner the best chance of first stopping the counterfeiting, and also recovering a remedy in terms of monetary dollars in the event that they are successful in stopping that counterfeiting.

While threat letters or cease and desist letters may be sent to entities that are counterfeiting, if that entity is located in some country other than the United States or unwilling to act upon a cease and desist letter, it may simply be not worthwhile for the trademark owner to partake in these types of steps.  Instead, consulting with a trademark attorney who has experience in trademark registrations, trademark enforcement and stopping trademark counterfeiting may be the best course of action for a trademark owner. 

So, at the end of the day, it’s always important to recognize that failure to monitor use of your trademark cannot only result in lost business, but it can also result in you losing some of your trademark rights and the protections that a trademark registration affords, so you would be well served to continuously monitor and be vigilant about third party use of your trademarks, especially as it relates to counterfeiting.

So, once again, this has been Brian Hall answering your question of how to stop trademark counterfeiting. 

You’ve been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.


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