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Protecting yourself from counterfeiters: The anti-counterfeiting toolkit

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With counterfeiting still the No. 1 problem for most trademark owners, a review of the tools available to mark owners in the United States in their fight against counterfeiters is critical.

Zadra-Symes

Nicholas Zovko

One of the most important steps that businesses can take against counterfeiting is to educate consumers, and their customers in particular. Web sites, advertising campaigns and training seminars may serve to educate the public as to the problems of counterfeiting, such as poor quality products, public health and safety concerns and links to terrorism and organized crime.

Registration

The first step that a business can take to protect its IP rights from counterfeiters' knock-off products is to register all protectable trademarks and copyrights. Trademarks are registered with the U.S. Patent and Trademark Office (PTO), while copyrights are registered with the U.S. Copyright Office.

Federally registering a trademark with the PTO confers the ability to record the mark with the U.S. Customs and Border Protection, a bureau of the Department of Homeland Security, in order to prevent the importation of infringing and counterfeit goods. It is also important to register copyrights. In addition to conferring the ability to record one's copyright with U.S. Customs, registration is a prerequisite to filing a copyright infringement suit based on works of U.S. origin and can serve as prima facie evidence of the validity of the copyright.

Recordation with customs

U.S. Customs provides border security and monitors goods being imported to and exported from the United States. Customs devotes substantial resources to protecting owners of IP rights by targeting, detaining, seizing and forfeiting shipments of infringing goods.

The first step is to record the registered intellectual property with U.S. Customs. Recording one's trademarks and copyrights with Customs gives the latter greater authority to detain and/or seize infringing imported goods.

In addition to recording their rights, businesses should work closely with U.S. Customs by continuously providing all information available regarding the suspected importation of counterfeit goods. In the Customs IP recordation form, an IP owner should identify a person who will respond to any inquiries from U.S. Customs, as Customs officers are generally willing to obtain digital photographs of suspect shipments and e-mail them to the contact for verification.

If an IP owner obtains advance notice of a suspect counterfeit shipment, this information should immediately be given to Customs, as it can then issue a trade alert to all ports around the country in order to locate the suspect shipment upon its arrival to a U.S. port.

Verified Rights Owner programs

Businesses seeking to protect their intellectual property from the sale of counterfeit goods on online auction sites should participate in Verified Rights Owner ("VeRO") programs. eBay (Nasdaq: EBAY) was the first to develop a comprehensive VeRO program to assist businesses in protecting their IP rights.

The program provides IP owners with a quick and easy method to report auction listings that infringe or potentially infringe their IP rights.

Report Internet counterfeiting and piracy

The Internet Crime Complaint Center (IC3) receives complaints regarding crimes that involve the Internet. IC3, a partnership between the National White Collar Crime Center and the FBI, receives, develops and refers criminal complaints regarding cyber crime, including issues dealing with IP rights, counterfeits and online auctions.

To file a complaint with IC3, an individual or business that is the victim of Internet fraud or a third-party representative such as an attorney can fill out a Complaint Referral Form online. IC3 then reviews the complaint and refers the matter to the appropriate federal, state, local or international law enforcement or regulatory agency.

Companies can also work proactively with and train law enforcement and governmental agencies, such as local law enforcement, the FBI, U.S. Customs and even the U.S. Postal Service and the Internal Revenue Service. Companies can also aggressively train law enforcement agencies at the major international shipping hubs. This may include at least annual visits and training efforts at the FedEx, UPS and Airborne DHL facilities and the relevant law enforcement agencies.

While the scale of global counterfeiting is staggering and cannot be wholly eradicated, businesses can take the practical pre-litigation steps outlined above to obtain some protection against the onslaught of trade in counterfeit goods in the United States.

Michael Gray, formerly of Knobbe Martens Olson & Bear, contributed to this report.


Helpful Contact Information

U.S. Customs
ICE: Immigrations and Customs Enforcement
IPR: Intellectual Property Rights

Main Web site: www.cbp.gov/

Forms: www.cbp.gov/document/forms

ICE contact: For a complete list of regional office contact information, call (866) DHS-2-ICE.

Enforcement of commercial IP rights: cbp.gov/xp/cgov/import/commercial_enforcement/ipr/

e-recordation online recording form
apps.cbp.gov/e-recordations/

How to get border enforcement assistance:
cbp.gov/xp/cgov/import/commercial_enforcement/ipr/ipr_enforcement/ipr_enforcement_assistance.xml
or call (202) 572-8710 or e-mail hqiprbranch@dhs.gov

To speak with an international trade specialist, contact the Los Angeles Strategic Trade Center on (562) 980-3119 ext 252, or via e-mail at ipr.helpdesk@dhs.gov.

Criminal violations: cbp.gov/xp/cgov/import/commercial_enforcement/ipr/ipr_enforcement/ipr_criminal_violations.xml
or call IPR Center Hotline at (202) 344-2410.

Questions about seizure authority: U.S. Customs Office of Regulations & Rulings, Intellectual Property Rights Branch, (202) 927-2330

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