Protecting Brands From Violation and Counterfeits – Part II Advanced Techniques

1. Use Copyright Registration to prevent Knock-Offs

Too frequently, overseas along with other low-cost manufacturers are widely-used to replicate effective products. You can do this by carefully creating a mold from the product after which by using their mold to create a replication. These knock-offs are imported in to the U.S. and go into the stream of commerce through a number of channels. A more elaborate infringer will be sure that the method is marketed having a name that doesn’t infringe the trademark. Possibly the name is going to be descriptive. Presuming the product configuration/shape isn’t protectable as trade dress or by design patent and there’s no trademark violation from the product name, it’s very hard for the company owner to police these counterfeits. One technique is to include an authorized copyright in to the product. An authorized trademark, particularly a emblem, similarly could be incorporated. With either strategy, a copier will probably copy “too carefully” obtaining the copyright or emblem in to the mold, therefore including it within the knock-off product. This gives cause for copyright and trademark violation claims, each of which support injunctive relief in addition to impoundment/destruction of infringing articles (Sections 34, 36 from the Lanham Act, 15 U.S.C. 1116, 1118 Sections 502-03 from the Copyright Act, 17 U.S.C.). The copyright claim (Sections 412, 504, and 505 from the Copyright Act, 17 U.S.C.) also enables for that recovery of attorney’s charges and statutory damages when the jobs are registered pre-violation.

2. Protecting Consumables in the Grey Market

Parallel or grey market imports are products marketed through the legal rights owner, or using the legal rights owner’s permission, in a single country after which subsequently imported into another country with no legal rights owner’s permission. Typically grey market merchandise is offered within the U.S. in a considerable discount, since the importer has the capacity to buy the products abroad in a lower cost. Thus, brand proprietors are able to better control the costs of the goods once the grey market cannot function as competition.

Legal rights proprietors may take positive stages in educating the general public regarding grey market goods and deterring importation of these goods. Legal rights proprietors should implement product control and tracking procedures for his or her foreign manufacturers and distributors to avoid unauthorized “mystery” transactions. If goods not approved for purchase within the U.S. still understand in to the U.S. marketplace, the legal rights owner must take necessary action, including terminating ties using the connected foreign manufacturer/distributor. Legal rights proprietors might also pursue an exclusion order under § 42 from the Lanham Act once they notice grey market goods. Further, financial relief, including disgorgement of profits, can be obtained under § 32 and § 43 from the Lanham Act.

Furthermore, brand proprietors should make the most of a possible strategy employing an essential exception towards the first-purchase and exhaustion doctrines, which permit legal rights proprietors to savor additional control over their foreign manufactured products than their domestically manufactured products. These doctrines, which limit a legal rights owner’s control and permit a purchaser to market or else get rid of a legitimately made copy, don’t apply when merchandise is manufactured abroad. Basically, a legal rights owner may aim to safeguard its consumables from grey market importation by its registered copyright in to the product, with no first-purchase and exhaustion doctrine hurdles. An item bearing an authorized copyright cannot legally be imported into and sold again within the U.S. without permission from the legal rights owner. Furthermore, as mentioned above, the copyright violation claim also enables for that recovery of attorney’s charges and statutory damages when the jobs are registered pre-violation.