Trademark Counterfeiting has been in existence for hundreds of years. A trademark is a “mark” that is used in commerce to differentiate one persons goods from another’s. That is a very simple definition. A trademark creates a sense of uniqueness that consumers identify with a particular brand or company.
Companies can spend years and millions of dollars in developing and building their brand and their trademarks. Branding and developing consumer confidence & demand are key components to success for any company that wants to succeed in the marketplace.
The intellectual property of a company is one of the most valued assets that drive the success of a company. With that being said, it is important to protect what has driven the success of a brand. Counterfeiters can’t be allowed to profit from the fruits of someone else’s hard work and commitment.
If counterfeiters are allowed to sell counterfeit goods, they will eventually “tarnish” the brand so badly that consumers will no longer have faith and confidence in the brand and will no longer be loyal customers. Trademark counterfeiting diminishes the value of a brand greatly.
Counterfeiters are thieves, who do not care who they hurt or possibly even kill from their criminal activity. There have been cases of trademark counterfeiting involving aircraft parts, brake pads, medicines, food items, batteries, and Christmas tree lights. You name it and counterfeiters will fake it. They do not care who they harm as long as they are making money. There are numerous cases of counterfeiting that have actually resulted in the deaths of innocent people.
There is no brand owner that is immune from counterfeiters. The counterfeiters not only target the large and famous brands, they will also target the small upcoming brands that are just starting to make their mark in the marketplace. Counterfeiters can “kill” a brand before that brand ever truly takes off.
In order for a trademark to be protected, the mark must be registered. In the United States of America, the mark can be registered with the United States Patent and Trademark Office (USPTO) or in each individual state.
Most brand owners register their trademarks with the USPTO. The USPTO’s website is USPTO.GOV. The site can be searched to determine if a mark is actually registered. It is important for law enforcement to confirm that a mark is actually registered prior to taking any enforcement action. It is also important that the mark is registered in the appropriate class of goods.
For brand owners, it is important to register every mark that they will want to protect. Without a mark being registered, the options for protecting the mark are extremely limited and can’t be handled in the criminal arena.
Counterfeiters have been known to check the USPTO’s website to see what marks are and are not registered. When they find a mark that is not registered, they will immediately start counterfeiting that mark because they know law enforcement can’t take any action against them. Counterfeiters are not dumb uneducated people, to the opposite, they are very smart ingenious people who see trademark counterfeiting as an easy way to make large sums of money and face little risk.
The violation of trademark counterfeiting occurs when someone uses someone else’s registered trademark without their permission. There are both federal and state criminal statutes that apply to trademark counterfeiting and allow for criminal prosecution of counterfeiters. It is important to review and learn the correct statute that applies and ensure that the “elements of the crime” are present to take any criminal enforcement action. The following things should be present when pursuing a trademark counterfeiting criminal enforcement action:
- The mark in question is a registered trademark in the proper class
- The subject did not have authorization to use the trademark
- An Expert witness confirms the items are counterfeit
- The subject knew or should have known the items were counterfeit
The above factors are key elements to any successful criminal enforcement action. Remember, IP Crimes are generally looked at as “victimless” crimes and most people do not see it as a big deal. That is why it is important to do a thorough job in any investigation that is conducted. The key factor in counterfeiting cases is usually proving knowledge on part of the subject. If you are a law enforcement officer and would like a free copy of “Law Enforcement Guide to Working Trademark Counterfeiting Case,” please email us and we will have a copy sent to you.