Counterfeit Goods Spread Feces on Your Face (and Other Reasons Consumers Should Avoid Counterfeit Goods)

Curtailing counterfeit goods is a major focus for brand owners who collectively spend billions of dollars a year to combat counterfeit goods worldwide.[1] Right now, the International AntiCounterfeiting Coalition is holding its annual conference in Seattle, where I assist clients by protecting and enforcing their brands through trademark registrations, copyright registrations, domain name registrations, customs recordations, and by providing targeted anticounterfeiting advice.

Why are counterfeit goods such a problem? There are several factors, but two of the biggest factors are controlled by consumers:

  • Consumers who want the prestige of the branded product, without the price. This is a supply-and-demand issue.
  • Consumers who don’t realize they’re purchasing counterfeit goods. This is an education issue.

For years, the emphasis has been on curtailing the act of manufacturing and selling counterfeit goods. While this will remain an important mission, significant strides can be made by educating consumers about what they are really buying when they purchase counterfeit goods. Here are the top three reasons to avoid counterfeit goods, and five tips to help you discern whether goods are counterfeit. Continue Reading

Replacement Parts Manufacturer Gets Burned: Music City Metals Co., Inc. v. Jingchang Cai

Music City Metals (MCM) built a thriving business designing and selling replacement parts for name-brand BBQ grills. Too good, it turns out, as a number of foreign competitors also jumped into the game, copying MCM’s own replacement parts and selling those replacements for the replacements. While MCM thought it was fine to market itself as providing replacement parts for other companies’ grills, and to use those other companies’ trademarks to explain which grills its products fit, MCM was not so happy to see these competitors using MCM’s marks and other information to market their parts as replacements for MCM’s (replacement) parts. So MCM sued about 60 competitors for copyright infringement, trademark infringement, unfair competition, and certain state law claims, and was able to achieve some initial success by obtaining a temporary restraining order against most of them. But it was MCM that felt the heat once a judge was able to consider the matter on something less than an emergency basis. Continue Reading

Alicia Bell and Carla Quisenberry Published in Oregon Beer Growler: Protecting Your Brewery’s Intellectual Property Can Pay Off in a Big Way

Although brewing is a collegial industry, brewery competition does grow tighter, and there’s a growing interesting in protecting brands—and even innovative beer recipes and processes—as intellectual property. In an article for Oregon Beer Growler, Alicia Bell and Carla Quisenberry discuss what brewery owners can do to protect their intellectual property.

To read the full article, click here.

The Supreme Court Tells PTAB “All or Nothing”: SAS Institute v. Iancu

The Supreme Court recently issued an opinion that will increase the certainty for parties to a patent dispute of whether the validity of challenged claims will be decided in a post-grant review process or federal court. SAS Institute v. Iancu involved review of an inter partes review (IPR) proceeding, which is a post-grant review proceeding that is often used as a less costly and quicker alternative to challenging patent claims in federal court. An IPR proceeding is a process under which a third party, such as a competitor or an accused infringer in a concurrent patent litigation case, can ask the director of the Patent and Trademark Office (PTO) to reconsider an issued patent by filing a petition that challenges the validity of some or all of the patent claims. If the director agrees to reconsider the patent, the Patent Trial and Appeal Board (PTAB) then conducts a trial-like proceeding adjudicating the validity of some or all of patent claims and issues a final decision regarding those claims. If the petitioner is not successful in convincing the PTAB that one or more of the challenged claims are invalid, the petitioner is then prevented from later making similar invalidity arguments in federal court for those claims in the final decision. Continue Reading

The EU’s General Data Protection Regulation (GDPR), Effective May 25, 2018, Will Impact Many United States Businesses

Who: United States businesses that process (i.e., collect, store, or transmit) the personal information of EU residents in connection with offering goods or services in the EU (online or otherwise) are subject to the GDPR, regardless of whether the business has any physical presence in the EU or any payment is made by the EU resident.

What: The GDPR is a comprehensive data-privacy regulation that gives people control over their data in ways that are very different than what US businesses are accustomed to. Businesses must clearly and accurately disclose how they collect and use personal data and be prepared to provide EU residents copies of their data, delete their data, correct their data, and report any data breaches to EU regulatory authorities within 72 hours. Many marketing communications and other data collection will also require “opt-in” consent from EU residents, which is a drastic departure from current/standard US practices.

When: May 25, 2018

Where: Globally. The GDPR has extraterritorial reach, so it will apply to US businesses that offer goods or services to people in the EU, even if those goods or services are only being provided online and the US company has no physical presence in the EU.

Why: Data privacy is a fundamental right in the EU, but EU regulators feel that many businesses, including many US-based companies, are not adequately respecting that right. The GDPR attempts to address this by providing significantly expanded rights to EU residents, putting significantly more obligations on companies that process EU resident data, regardless of their physical location, and increasing liability exposure. The GDPR provides both a private right of action for EU residents (even without any finding of material harm) and companies are subject to enormous regulatory fines; fines may reach the greater of (a) €20 million or (b) four (4) percent of global annual revenue (even if only one (1) percent was earned in the EU).

How: There are steps that US businesses should be taking now to come into compliance by the May 25, 2018 enforcement deadline. These include: Continue Reading