Online Enforcement and Anti-Counterfeiting

  • Share
  • Overview
  • Insights
  • Attorneys

Counterfeit merchandise has long been an issue for business owners, but it’s a problem that’s reached astounding levels in recent years. According to the U.S. Department of Homeland Security, the number of seizures of counterfeit goods at U.S. borders increased from 3,244 in the year 2000 to 33,810 in 2018. Additionally, the value of counterfeit goods traded internationally skyrocketed 154% between 2005 and 2016. In 2019 report from Incopro, 26% of American consumers had accidentally purchased a counterfeit product online in the previous year.

The range of products that are being counterfeited is also much larger than many consumers realize. Things like designer handbags and high-end watches have long been major targets for counterfeiters. But now, counterfeit versions of many everyday items, such as child car seats, electronics, tweezers, and water bottles, can easily be purchased on many popular eCommerce websites.

The growth of eCommerce has helped open new doors to business owners, but unfortunately, it’s also opened doors for bad actors. With third-party sellers being able to list items for sale on eCommerce giants like Amazon and Walmart, it’s possible for counterfeiters to have their items listed alongside, or even ahead of, legitimate products. Prime listing placements on these eCommerce platforms are highly competitive and many sellers of counterfeit products engage in black hat tactics, including fake product reviews and listing sabotage, to position themselves ahead of legitimate businesses.

Counterfeit merchandise not only causes monetary losses for legitimate businesses, it can damage their image with consumers. In some cases, the inferior quality of counterfeit products can be dangerous. In the Incorpro study, 52% of consumers reported losing trust in a brand after buying a counterfeit product online. A strong IP enforcement strategy can be crucial in helping legitimate businesses prevent financial losses and protect their reputations.

"Our strategies reduce impact to your sales and remove poor quality imitations from the marketplace that can damage your brand and create safety hazards for consumers."

Online IP Enforcement

Using high-tech solutions like artificial intelligence and automated processes, we’re able to maximize our IP enforcement efforts. When infringements are discovered, we report them to online marketplaces, internet service providers (ISPs), social media platforms, payment processors, and federal agencies. Through participation in anti-counterfeiting industry associations, our team has valuable contacts at key marketplaces and agencies. We also have experience assisting federal agencies and local law enforcement with the prosecution of criminal offenders.

Brooks Kushman employs a team of industry-leading patent prosecution and litigation professionals experienced in navigating Amazon’s Utility Patent Neutral Evaluation Procedure, which is now referred to as the Amazon Patent Evaluation Express (APEX) program, the program in place for utility (and some design) patent owners on Amazon who believe their product has been infringed. We are prepared to represent parties in disputes of this nature and make well-reasoned and technically sound arguments on behalf of our clients regarding infringement or non-infringement. The patent evaluation program is integrated with Amazon’s Brand Registry program such that a finding of infringement can lead to accelerated takedown procedures that are effective in removing many infringing products or are devastating to legitimate markets when such procedures are abused. The Utility Patent Neutral Evaluation Procedure also has more limited defenses than conventional patent litigation, and because of this, coupled with the quick resolution process, even untested utility patents may be particularly significant to your Amazon e-commerce market.

Domain Names

From registration to enforcement, we’re prepared to help our clients ensure their domain is protected every step of the way. Before registering a domain, we can assist in making sure the domain name does not infringe on any existing trademarks. After registration, we can help with issues such as deceptively similar domains and other domain name disputes. Our extensive experience enforcing our clients’ trademark rights through arbitration under the Uniform Domain Name Dispute Resolution Policy (UDRP), has resulted in a near-perfect record of domain name recovery actions.

Litigation – Special Remedies

We have also assisted registered trademark holders in obtaining ex parte seizure orders and preliminary injunctions against infringers.

Customs Recordal and Enforcement

When a client’s product needs to cross international borders, we’re here to help eliminate delays along the way. Our team works with clients to develop strategies for recording trademark registrations with the Customs and Border Patrol authorities in the United States and with other customs authorities around the world.

With our main office located in Metro Detroit, near the most active international border in the United States, we are in a prime position to take an active role in preventing the transportation of counterfeit goods across the border. Our team prepares Brand Protection Guides and holds training sessions for Customs Officials to help identify genuine and counterfeit goods. This information and training increases the likelihood that counterfeit goods will be seized and also reduces the possibility that our clients’ genuine goods won’t be delayed.



Nike v. StockX Case Highlights Many Unanswered Questions About IP and NFTs

Read More