IP: Defending Against Counterfeiting

Christopher DolanTrademark counterfeiting can damage a company's market and brand in short order. Considering the ease with which counterfeiters can market their illegitimate goods, particularly over the internet, any consumer product company that invests significant resources to develop a fashionable and trusted image should be well aware of the civil counterfeiting cause of action and related strategies.

Because remedies for trademark counterfeiting are severe, including, for example, treble damages and ex parte seizure of counterfeit goods, strict standards must be met to bring a civil trademark counterfeiting claim. The complainant must own a federal registration on the United States Patent and Trademark Office's Principal Trademark Register for a trademark that is "identical with or substantially indistinguishable from" the allegedly counterfeit mark. Additionally, the complainant's federal trademark registration must recite the exact class of goods or services to which the alleged counterfeit mark is attached. This is not to say, however, that the accused goods need be strictly identical to the complainant's goods to be considered counterfeits. For example, if the genuine goods are suitcases made of leather, then a copy bearing the suitcase maker's registered trademark, but made of another material instead of leather, could still be considered counterfeit. To support a counterfeiting claim, the complainant's registered mark must also be currently in use in connection with the goods and services recited in the trademark registration. For these reasons, it is critical that a company considering enforcement action carefully audit its trademark portfolio to confirm the relevant marks are validly registered and that the marks are currently in use on the relevant goods.


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Christopher Dolan

Christopher Dolan is a shareholder in Brinks Hofer Gilson & Lione’s Chicago office and a member of its Trademark Practice Group. His practice focuses on...

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