Counterfeits Got You Down? An Ex Parte (Seizure) Might Cheer You Up!

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If trademark infringement and dilution are frequent headaches for brand owners, counterfeiting – which the U.S. Trademark Act defines as use of “a spurious mark identical with, or substantially indistinguishable from, a registered mark” – is a migraine.  As a practical matter, counterfeiting in most cases renders perfunctory the task of analyzing the “likelihood of confusion factors” required in traditional infringement cases.  In counterfeit cases, the marks and goods are identical, and the counterfeit mark was applied with the intent to deceive consumers into believing that fake goods are genuine, so it’s reasonable to assume it will do exactly that.

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The “Do’s” of IP Due Diligence

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So you’ve been asked to help acquire a company with an extensive IP portfolio. Great! Now it’s time for that mysterious task known as “due diligence.” Due diligence is intended to confirm all of the assets that a buyer will obtain in an acquisition and to resolve any discrepancies before the deal closes.

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Playing a game of “Guess Who”: the domain name dispute process post-GDPR

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Since the European Union’s General Data Protection Regulation (GDPR) went into effect in late May, its impact continues to be felt by cybersecurity researchers, investigators, law enforcement officials and – perhaps less obviously – anyone who relies on the information provided by the Internet Corporation for Assigned Names and Numbers’ (ICANN) WHOIS service. This includes lawyers, like us, who routinely check WHOIS to ascertain the identity of a domain name registrant.

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Brand Visibility via Commercial Co-Venture Agreements

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We’re seeing a lot of commercial co-ventures (CCVs) lately.  It makes sense, right?  CCVs can be a win-win for all parties involved – a company informs the public that it will donate a portion of its sales revenue to a nonprofit organization and, in return, the nonprofit allows the company to use the nonprofit’s brand name to market the product or service.  (For example:  “For every bottle of honey purchased in November 2018, Good Intentions Stores will donate 25 cents to the Fictional National Honeybee Preservation Society.”)  Such collaborations can increase the company’s sales and goodwill, and the nonprofit benefits from donations.

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Making Trademark Applications “Special”

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We tend to think that trademarks, in general, are pretty special.

However, a “special” trademark application has a … well … special meaning to the PTO.  The PTO normally examines applications in the order it receives them, which can take about three to four months.  That said, there are two ways to make an application “special” so that the PTO will pull the application out of order and expedite its initial examination.

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Strategies for Squashing Sketchy Specimens

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So your time-of-filing trademark watching service [1] warned you that someone filed a use-based application to register a mark that’s awfully close to your mark.

You drill into their application file history and notice that their proof of use of their trademark looks like this:

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A Look at Brand Lifeguarding: Trademark Watching

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In a September 6, 2018 webinar hosted by CompuMark, I presented on the very important topic of trademark watching services. Thanks to CompuMark for inviting me to speak, and to everyone who attended the webinar and asked great questions!  (If all goes according to plan, future blog posts may cover some of the questions we ran out of time to answer during the webinar).  For those who weren’t able to make the webinar during the live presentation, you can access a copy on CompuMark’s website (you’ll need to register on the right side of the screen).

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