Protecting Your Brands for Theft and Counterfeiting in 2016 and Beyond
Companies often invest millions of dollars establishing and maintaining their brands. However, with counterfeiters similarly seeking access to the competitive market, these brands, their value, and their reputation increasingly are at risk.
Misuse of trademarks and un-lawful copying of product or packaging design are quite common. These situations can lead to product safety and security risks, concern of consumers, and financial risks to your business. Trademark violation is the primary legal problem underlying product and component counterfeiting of luxury goods, drugs, medical products, alcohol, food, automobile parts, military and security equipment, and other industrial products. Trademark misuse also extends to advertising, marketing, services, or communications in which a counterfeit product in un-fairly associated with another trademarked brand or product name.
Product failure or supply disruption due to counterfeits can provoke claims for replacement and compensation, and result in lost sales, damage to brand and reputation, and financial and legal risk. The best protection is to have clear policies, procedures, and contracts; sound management of intellectual property, good risk assessment, and careful supply chain logistics management.
In this two hour, LIVE Webcast, a panel of thought leaders and practitioners assembled by The Knowledge Group will discuss the best methods for Protecting Your Brands for Theft and Counterfeiting in 2016 and Beyond, and offer guidance for the best practices and procedures for companies to protect their brands.
Key topics include:
- Brand Risks
- Theft, Counterfeiting, & Legal Challenge
- Trademark Rights Erosion
- Digital Piracy Threats
- Anti-counterfeiting Strategies
- Anti-theft Strategies
- Patent Troll Avoidance
- IP - Trademark Protection
- Social Media Monitoring
- Litigation and Compliance Risks
- Risk Mitigation Best Practices
James A. Gale, Esq., Founding Member
Feldman Gale, P.A.
- Registration with the USPTO – which provides the registrant with the ability to bring a claim for counterfeiting and to recover statutory damages in an amount between $1,000 and $200,000 per counterfeit mark, regardless of whether the counterfeiting was willful. See 15 U.S.C. §§ 1116-17.
- Registration in Foreign Markets – which may provide constructive notice or rights, and aid the ability to bring suit if the violation occurs outside U.S. borders.
- Non-Compete Agreements with Authorized Distributors – restricting sales outside assigned territory, restricting sales to certain types of retailers and/or below certain prices, restricting online sales.
- Use of Product & Manufacturing Codes – as a measure of quality control and for aid in any future recall, and has the critical benefit of tracking and prosecuting gray market sales.
- Record Mark with the Department of the Treasury for use by U.S. Customs in Barring Entry of Infringing or Counterfeit Goods - pursuant to Section 42 of the Lanham Act any domestic manufacturer or trader, and any foreign manufacturer or trader (who is entitled by treaty, convention, declaration, or agreement between the U.S. and a foreign country) may require her name and residence, and the name of the locality in which her goods are manufactured, and a copy of the certificate of registration of her trademark to be recorded in books kept in the Department of the Treasury, and may furnish to the Dept. facsimiles of her name, the name of the locality in which his goods are manufactured, or of her registered trademark, and thereupon the Secretary of the Treasury shall cause one or more copies of the same to be transmitted to the proper officers of customs.
- Recent case law / pending lawsuits in connection with online counterfeiting and whether e-commerce platforms can be held secondarily liable. (Gucci v. Alibaba, Altayyar v. Etsy)
Richard C. Gilmore, Registered Patent Attorney
Social Media Monitoring:
- The Effects of Social Media on Traditional Trademark Law and Infringement: What’s Different?
- Examples of Common Trademark Infringement in Social Media
- Potential Legal Weaknesses in Protecting Your Brand
- How Should You Approach Protecting Your Brand Most Efficiently
Trademark Rights Erosion:
- Trademark Levels of Distinctiveness
- Genericide: Case Examples
- The Balance of Successful Branding and Preventing Genericide
- Case Example: Nintendo and its Successful Prevention of Trademark Rights Erosion
Ashly E. Sands, Esq., Partner
Epstein Drangel, LLP
- U.S. Custom & Border Protection (CBP) Trademark & Copyright Recordations (what is required for the applications/why), Product ID Manuals, Port Trainings, etc.
- The CBP's Amended Anti-Counterfeiting Rules - HR 644
- CBP’s C-TPAT Program
- CBP’s Grey Market Laws/Regulations
Michael T. Murphy, Partner
GLOBAL IP Counselors, LLP
- Gain registration of IP rights – either trademark or copyright
- U.S. trademark or copyright registration needed for recordation with U.S. Customs
- Registrations anywhere can be used to take down online sales listings
- China online marketplaces – Alibaba.com, weiku.com
- U.S. based online marketplaces – ebay.com, Amazon.com
- Enforcement of product configuration or colors
- Customs seizures are still important, but shift to direct shipments based on online sales has changed the game. Smaller direct shipment quantities are harder to identify and bypass traditional distribution channels.
Who Should Attend:
- Advertising and Marketing Professionals
- Brand Managers
- Marketing & Advertising Directors
- Marketing/Sales Executive
- Copyright Lawyers
- Design Patent Attorneys
- IP Attorneys & Consultants
- Patent Attorneys
- Trademark Lawyers
- In-house Counsel
- Public and Private Companies
- Other Related/Interested Professionals and Organizations
James A. Gale is a founding member of Feldman Gale, a national intellectual property law firm with offices in Miami, Tampa, Washington, D.C., Los Angeles and Redwood City. He is a registered patent attorney who focuses on matters particular to intellectual property counseling and litigation. Mr. Gale has represented clients in cases involving patents, trademarks, copyrights, unfair competition, covenants not to compete, theft of trade secrets and internet disputes. Mr. Gale has appeared in over 260 federal cases in more than 48 Federal District Courts, as well as handled hundreds of injunctions in over 35 different states around the nation. He was the inaugural chair of the Florida Bar’s Committee for Intellectual Property Law Certification and has been chairman of the Bar’s Intellectual Property Committee. He is rated AV Preeminent® by Martindale Hubbell and has been listed as one of the Best Lawyers in America for Intellectual Property Litigation and Patent Law. Gale graduated from the University of Florida College of Law and has a B.S. in Microbiology and Cell Sciences. Prior to establishing Feldman Gale, he was a partner in a national firm as well as serving directly as vice president and corporate counsel of a major medical device manufacturer.
James A. Gale is a founding member of Feldman Gale, a national intellectual property law firm with offices in Miami, …
Rick Gilmore is a founding member of Maschoff Brennan. Rick is involved in all aspects of intellectual property law, with a focus on patent and trademark application preparation and prosecution domestically and internationally. He represents large and small clients from a diverse range of industries and often works directly with in-house counsel to develop and maintain their worldwide patent and trademark portfolios. His patent practice includes utility and design patents, appeals to the U.S. Patent and Trademark Office Board of Appeals and Interferences, and reexamination proceedings. Rick is a frequent speaker on patent and trademark matters. He speaks each year at the American Intellectual Property Law Association (AIPLA) Annual Trademark Boot Camp. He has also taught many law school classes on patent and trademark issues.
Rick Gilmore is a founding member of Maschoff Brennan. Rick is involved in all aspects of intellectual property law, with …
Ashly E. Sands, Esq., is a partner at Epstein Drangel LLP and head of the anti-counterfeiting group. Ashly¹s practice focuses in the areas of anti-counterfeiting, trademark, trade dress, copyright, licensing, internet, false advertising, and unfair competition law. She specializes in advising brands in building, managing, using, protecting and enforcing their intellectual property rights and assets. She is also known for developing, implementing and managing successful, tailored anti-counterfeiting programs for global brands in a multitude of industries. In addition, Ashly excels in delivering efficient and effective strategies in IP disputes and litigation. Ashly holds a Bachelor of Science in Management from A.B. Freeman School of Business at Tulane University, where she majored in Business Law and Political Science and earned her J.D. from New York Law School.
Prior to joining Epstein Drangel LLP, during her law school career, she gained experience developing anti-counterfeiting and anti-piracy strategies; working on successful trademark and copyright litigations; managing corporations’ interests in extensive intellectual property libraries; addressing internet issues such as: service provider liability, copyright and trademark use on the internet, including DMCA provisions and domain name disputes; and negotiating and drafting advertising, licensing, publishing, distribution and promotional agreements through her internships at The Donna Karan Company; at the Michael Kors Company as Licensing Intern; at Chanel as Internet Law Intern; and at MTV Networks on a project for the Anti-Piracy Enforcement Team. Additionally, Ashly also worked for the Hon. Kent A. Jordan as a summer law clerk on the Third Circuit Court of Appeals and was the co-founder of “CaseClothesed.com”, listed as law.com¹s 15 new blogs to watch.
Ashly is an active member of International Trademark Association (INTA) and the International Anti-Counterfeiting Coalition (IACC). She directed the launch of the firm¹s new blog, “VIS-a-IP”. She also played an integral role in the development of uFaker, a proprietary revolutionary anti-counterfeiting case management system.
Ashly E. Sands, Esq., is a partner at Epstein Drangel LLP and head of the anti-counterfeiting group. Ashly¹s practice focuses …
Michael Murphy focuses on intellectual property litigation, anti-counterfeiting, licensing and counseling. Mr. Murphy litigates patent, trademark, copyright and trade secret cases in key courts throughout the country including the District of Delaware, Eastern District of Texas, Southern District of New York, Eastern District of Virginia and others.
As a former Trademark Examining Attorney at the U.S. Patent and Trademark Office, Mr. Murphy advises on clearing and protecting worldwide trademarks, and designs brand strategies. He has extensive experience in confronting misuse of client’s trademarks and copyrights on the internet and in blocking attempts to register client’s marks by bringing litigation or opposition and cancellation proceedings at the Trademark Trial and Appeal Board (TTAB).
In addition, he actively represents clients before U.S. Customs and Border Protection to aid in identifying and seizing counterfeit products at the border. He regularly visits the ports and provides training to Customs Officers and Import Specialists on how to identify products that are counterfeit of his clients.
Mr. Murphy is active in taking down postings for counterfeit goods on online marketplaces such as eBay and Amazon, as well as Chinese websites Alibaba, Weiku and Taobao and others. This includes takedowns based on word and nontraditional trademarks, including product shapes and colors and based on copyright.
Michael Murphy focuses on intellectual property litigation, anti-counterfeiting, licensing and counseling. Mr. Murphy litigates patent, trademark, copyright and trade secret …
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About Feldman Gale, P.A.
Feldman Gale is an AV-rated, full-service intellectual property law firm known for the high level of service it provides to its clients. The firm has most recently been ranked in multiple categories by U.S. News & World Report and as a Best Lawyers Best Law Firm. Our attorneys prosecute, litigate, clear and license patents, trademarks and copyrights for an array of technologies across a broad range of industries. They also advise Internet and computer software companies, the Fortune 100 and web developers on how to protect and optimize the value of their trade secrets and Internet rights.
As litigators, its attorneys have built a reputation as an experienced, dynamic team that practices from a national platform. The firm represents manufacturers, distributors, service providers and technology-based companies through mediation, arbitration, trial and appeal. The firm also advises these clients on a host of issues, including trademarks, non-compete agreements, trade secrets, patents, copyrights, e-commerce and internet issues, entertainment, commercial litigation and medical device liability.
About Maschoff Brennan
Maschoff Brennan is a full-service intellectual property and commercial litigation law firm with offices in Park City and Salt Lake City and Orange County. Maschoff Brennan’s attorneys focus on patent and trademark prosecution, IP and complex litigation (including patent, trademark, copyright, and securities litigation and counseling), post-grant patent proceedings, IP/technology opinions and investigations, licensing and transactions, and IP portfolio management. Maschoff Brennan’s clients include Fortune 500 companies, multinational corporations, individual inventors, startups, and world-renowned universities. Visit www.mabr.com for more information.
About Epstein Drangel, LLP
Epstein Drangel LLP is internationally recognized as one of the leading IP boutique law firms in New York City. We specialize in all aspects of intellectual property law and provide a full-range of services, including litigation, anti-counterfeiting, prosecution, transactional services, and commercialization of IP assets in the United States and across the globe.
We are Intellectual Property Experts
Intellectual Property is not a part of our practice, it IS our practice. Each member of our team is skilled in the complexities of clearing, securing, enforcing and defending IP rights.
We are Client-Focused
We believe that every client is unique and that the only way to consistently deliver quality results is to understand our clients’ businesses inside and out. This knowledge enables us to anticipate and develop creative solutions for our clients’ long-term challenges as well as effectively manage their day-to-day needs and concerns.
We Deliver Cost-Effective Legal Services
While other firms may require an army of attorneys to handle a single matter, we do not. Instead, we apply a team-oriented approach, relying upon our experience, expertise, and use of technology to deliver the highest levels of intellectual property representation in an efficient and cost-effective manner. We may be small in size but we are big in results.
INTELLECTUAL PROPERTY RIGHTS
DEFINED. PROTECTED. ENFORCED.
About GLOBAL IP Counselors, LLP
Global IP Counselors, LLP offers clients the full range of services to develop, exploit and enforce their intellectual property.
The firm protects client IP rights by combatting infringement worldwide through comprehensive enforcement strategies. Global IP aggressively brings intellectual property litigation involving patent, trademark, trade secrets, and copyrights in key courts throughout the country. In anti-counterfeiting matters, the firm polices infringing products in online marketplaces and works with U.S. Customs and Border Protection to seize infringing imports. Global IP provides a full range of trademark development and brand protection services including global trademark portfolio management, enforcement, and litigation.