March 13, 2020

Counterfeits in the Age of COVID-19: Online Best Practices

As the COVID-19 pandemic spreads throughout the corners of the world, people rush to complete shopping and stock pantries and medicine cabinets by shopping online. In their haste and sometime desperation, individuals become easy targets for fraudsters and counterfeiters. Now more than ever offers stark examples of why counterfeiters always seek to profit from human misery and show no regard for the fragility of human life.

Online Best Practices for Protecting Against Counterfeit Products

Spend some time shopping for elusive hand sanitizer, gloves, disinfectant wipes and more and you will see quite clearly the manner in which counterfeiters seek to profit. Offering items that appear to be genuine while making spurious claims about curative properties is often a sign that the goods may not be what they appear to be.

Take a close look at the seller names. Do they appear to be an odd jumble of letter thrown together? Does the seller have a lack of selling history? Prices too low for a tight, shortage plagued market?  Product descriptions sound a little off or not quite in English? All signs you may be dealing with less than reputable merchants.

What about an unheard of site offering product at reasonable to slightly high prices? You attempt to order but after providing all you credit card and shipping information the site bombs out. Often a sign of a scam site that is more interested in obtaining data than providing product.

The golden rule of if it’s too good to be true, it likely isn’t still holds even in these difficult times. When personal health and safety are of the utmost concern, it pays to stick to the sites, brands and sellers you are familiar with and have a reputation of being responsible. Do not be fooled by counterfeiters who have no qualms about putting health and safety at risk. And remember, no matter how much a legitimate site claims to be policing third party sellers, the sheer volume can overwhelm those efforts.

It is important to be as vigilant about purchasing health related products as it is to prevent the spread of COVID-19.  Let’s be careful out there!

March 4, 2020

SHOP Safe Act of 2020: Making E-Commerce Companies Liable for Counterfeits

The House of Representatives recently introduced the Stopping Harmful Offers on Platforms by Screening Against Fakes in E-commerce (SHOP Safe) Act of 2020. The bipartisan bill incentivizes e-commerce platforms to adopt best practices to reduce the presence of counterfeit products on their sites. E-commerce sites that fail to adhere to the steps would be held liable.

The SHOP SAFE Act would:

  • Establish contributory trademark liability for e-commerce platforms when a third-party sells counterfeit products and the platform does not follow certain best practices
  • Incentivize e-commerce platforms to establish best practices to vet sellers, remove counterfeit listings and monitor sellers
  • Require e-commerce platforms to take steps to prevent the continued sale of counterfeits by third-party sellers or be subject to contributory liability

10 Reasonable Steps in the SHOP Safe Act:

Steps for e-commerce platforms would include:

  1. Verify the third party seller’s identity, principal place of business and contact information
  2. Require the third-party seller to verify and attest to the authenticity of its goods
  3. Provide contractual requirements that the third-party sellers agrees not to sell, distribute or advertise counterfeit goods on the platform and consents to the jurisdiction of U.S. courts
  4. Clearly display the third party seller’s verified principal place of business, contact information and identity, including the country of origin for both the manufacturing and shipping goods
  5. Require the third party seller to use images that they own or have permission to use and that accurately depict the actual goods being sold
  6. Implement technology to screen goods before posting to prevent counterfeit sales
  7. Implement a timely takedown process for the removal of counterfeit listings
  8. Terminate any third-party seller that has engaged in more than three instances of counterfeit sales, distribution or advertising
  9. Screen and prevent third-party sellers from participating on the platform under a different seller identity or alias
  10. Provide the infringing third-party seller’s information to relevant law enforcement and, upon request, the trademark owner

What this Means for Brand Owners

There has been an increase in efforts to help prevent the sale of counterfeit goods that pose a threat to consumer health and safety.

More brands are increasingly transitioning from traditional brick and mortar to online retail. With that transition, we have seen a significant increase in the sale of counterfeits goods online. Combating counterfeit sales can be extremely timely and costly for brand owners.

While e-commerce platforms have started to implement policies to manage counterfeit sales, contributory liability puts the burden of responsibility on the both the counterfeit seller and the platform. If implemented, these practices will create an incentive for online retailers to be more diligent and proactive.

Gibney will continue to monitor developments on this issue.

Author
John Macaluso
Partner, Intellectual Property
jmacaluso@gibney.com

February 26, 2020

Brian Brokate Recognized as Leading IP Attorney in World Trademark Review 1000

Gibney’s Intellectual Property Chair Brian Brokate has been recognized in the 2020 edition of World Trademark Review 1000: The World’s Leading Trademark Professionals. Brian is listed as a leading attorney in New York. WTR noted that “Brian Brokate is one of the top anti-counterfeiting experts in the United States. His client, legislative, policy and education work puts him at the heart of solutions to the piracy problem.”

Now in its tenth year, the WTR 1000 is a comprehensive list of the world’s leading private practice trademark experts on the basis of subjective feedback received from those operating in the market. The WTR 1000 remains the only standalone publication to recommend individual practitioners and their firms exclusively in the trademark field, and identifies the leading players in over 80 key jurisdictions globally. The comprehensive research process includes interviews with hundreds of lawyers, attorneys and their clients involved with trademarks. Individuals in WTR 1000 are included based on knowledge of their practice and the market in which they operate.

Brian Brokate is head of Gibney’s Intellectual Property Group. He has extensive experience assisting companies in investigation and enforcement procedures to combat trademark and copyright infringement. With a niche focus on anti-counterfeiting and anti-piracy, he handles and is involved in all stages of civil anti-counterfeiting and infringement litigation as well as state and federal criminal actions.

January 2, 2020

Brian Brokate and Angelo Mazza to Speak at Intellectual Property Rights Enforcement 2020

Gibney intellectual property partners Brian W. Brokate and Angelo E.P. Mazza will speak at the Practising Law Institute’s Intellectual Property Rights Enforcement 2020 event on January 16, 2020. Brian Brokate is also co-chair of the event. This will be the ninth year that Brian and Angelo have participated in this program.

Angelo will lead the first panel “Current Government IP Enforcement Programs.” Topics include:

  • DOJ’s IP prosecutions in the context of the latest technology trends
  • Federal criminal vs civil IP enforcement
  • What crimes DOJ prosecutes and determining factors
  • CHIP program at the judicial district level
  • Substantiating advertising claims: The science of compliance
  • “Made in USA” and other promotional promises
  • “Influencer” marketing and applying truth-in-advertising principles in social media
  • Data security, consumer privacy, and the Internet of Things

Brian Brokate will speak on the “Anticounterfeiting Update” panel. Topics include:

  • Direct liability: 2019 case law updates and trends
  • Getting it right. Seizures and ex parte remedies: Practical guidance on drafting an effective order and executing same
  • Contributory liability: Effective strategies against online and brick and mortar retailers
  • The President’s Memorandum on Combating Trafficking in Counterfeit and Pirated Goods: An update on actions taken by the federal government
  • Implementing an Enforcement Program in China
  • An overview of the government agencies involved in the protection of intellectual property rights
  • The online marketplaces and social media platforms that every brand should be aware of
  • Practical tips for implementing an anticounterfeiting program in China
  • The recent trade war and its impact on the sale of counterfeit goods

For more information and to register visit the PLI website.

November 6, 2019

Brian Brokate Recognized in Who’s Who Legal Trademarks

Brian Brokate was recognized in Who’s Who Legal: Trademarks 2019. WWL: Trademarks highlights leading trademarks lawyers who are recognized for their broad-ranging expertise across the field of trademark law, assisting clients of all sizes with a wide range of matters, including prosecution, enforcement, portfolio management and dispute resolution.

Brian is head of Gibney’s Intellectual Property Group. He has extensive experience assisting companies in investigation and enforcement procedures to combat trademark and copyright infringement with a niche focus on anti-counterfeiting and anti-piracy.

October 2, 2019

Brian Brokate Discusses Emerging Trends in Privacy Law at IGAL

Brian Brokate, Chair of the Intellectual Property Group, attended the conference for The Intercontinental Grouping of Accountants and Lawyers (IGAL) in Frankfurt, Germany from September 23-28. Brian spoke on Emerging Trends in Privacy Law in the United States during the conference. Topics included: the California Consumer Privacy Act; a survey of recent state laws; recent proposed federal legislation; and emerging trends on enforcement and consent.

Brian was also reelected to IGAL’s Board of Directors for another three year term. He will serve as Secretary and director of North American recruitment.

IGAL is a leading business network of legal and accounting firms whose members offer superior services related to legal, financial, tax and insolvency matters to companies and individuals with international activities, as well as expert and personal assistance to reduce the obstacles of doing business in a foreign environment and at a distance.

Brian Brokate has extensive experience assisting companies in investigation and enforcement procedures to combat trademark and copyright infringement. With a niche focus on anti-counterfeiting and anti-piracy, he handles all stages of civil anti-counterfeiting and infringement litigation as well as state and federal criminal actions. Learn more.

 

August 28, 2019

Robert Tracy and Maja Szumarska Discuss Dress Code Discrimination in New York Law Journal

Robert Tracy and Maja Szumarska co-authored the article “Are dress codes and grooming policies a source of potential liability for employers?” for the New York Law Journal’s Fashion Law issue published on August 26, 2019. Recently, state and local governments have passed new laws and increased enforcement of existing laws to protect employees from discrimination based on race or gender identity or expression in the workplace. In the article, they review the new guidance and discuss best practices for employers to update their dress and grooming policies and practices.

Read the full article.

Maja Szumarska focuses on brand protection and enforcement. She represents many prominent brands in litigation matters involving trademark, trade dress and copyright infringement claims and enforcement actions in federal court. Maja is an experienced litigator and has represented companies in various industries in commercial disputes in federal and state courts. She frequently litigates labor and employment law matters involving discrimination and harassment, retaliation, restrictive covenants and wage and hour claims.

Robert Tracy is Chair of Gibney’s Labor and Employment Group. He practices management-side labor and employment law and business litigation. Bob keeps clients informed of changing employment laws and develops strategic employment policies to avoid litigation, maintain a healthy work culture and minimize risk. He has conducted seminars on employment issues including ADA, FMLA, sexual harassment and union avoidance.

July 30, 2019

After August 3, 2019 All Foreign Trademark Applicants Will Be Required To Appoint A Licensed U.S. Attorney

The United States Patent and Trademark Office (USPTO) announced a new rule that all trademark applicants and registrants whose domicile or principal place of business is not located within the United States must be represented by an attorney licensed in the United States. This rule becomes effective on August 3, 2019.

  • This rule will not immediately impact applications filed before August 3, 2019 or existing registrations. However, if an application filed before August 3, 2019 becomes the subject of an office action issued after the date, or if it is necessary to file an extension of time or a specimen to complete an application under Section 1(b) (intent to use), the foreign applicant will be required to designate an attorney licensed in the United States to respond to the office action.
  • Foreign owners of registrations issued prior to August 3, 2019 will not need to appoint a qualified attorney licensed in the United States until it is time to file a declaration of continued use or a renewal.
  • After August 3, 2019, all new filings at the USPTO not in compliance with this rule will be informed through an office action. The applicant will have the usual six (6) month period to respond to the office action and failure to comply will result in abandonment of the application.
  • Foreign filers using a TEAS Plus application, the most popular application used by foreign filers, will be unable to submit the application unless the filer completes the section designating a qualified US attorney as the applicant’s representative.
  • There is one exception to this rule. Applications filed under the Madrid Protocol that satisfy all formalities and statutory requirements, and thus are ready for publication without the issuance of any office action, are not required to appoint a qualified US attorney of record. However, if the application filed under the Madrid Protocol receives an office action, the applicant will be required to designate a qualified US attorney when responding to the office action.

For more information about the USPTO’s new requirement, please visit https://www.govinfo.gov/content/pkg/FR-2019-07-02/pdf/2019-14087.pdf

For questions about how to comply with the United States Patent and Trademark Office’s new rule, please contact Beth Frenchman at bfrenchman@gibney.com or at (212) 906-3334.

May 15, 2019

Angelo Mazza to Moderate INTA Panel on Working with Millennials

Intellectual Property Partner Angelo Mazza is moderating a Table Topic at INTA’s 2019 Annual Meeting in Boston, MA. His session “Working with Millennials: Are They Really That Different?” will take place on May 18. This will be a deep dive into issues facing law firms as more millennials join firms and the conflicts that sometimes arise between generations. The INTA Annual Meeting is the largest and most influential gathering of brand owners and intellectual property professionals from around the world.

Angelo counsels clients in developing brand protection and enforcement strategies, and works extensively with law enforcement on intellectual property-related crimes. He has trained over 60,000 law enforcement officials including U.S. Customs and Border Protection, Immigration and Customs Enforcement and the Federal Bureau of Investigation.

 

May 9, 2019

Gibney Hosts Coded: Dress and Discrimination with NYC Bar Association

Gibney will host the NYC Bar Association’s  Fashion Law Committee meeting on May 14. The breakfast meeting will take place from 8:30 – 9:30am to discuss “Coded:  Dress and Discrimination. ” This discussion will be focused on employment matters including dress codes, grooming standards, gender identity/expression and best practices for fashion brands.

Panelists include Gibney attorneys Maja Szumarska and Bob Tracy as well as Brittny Saunders from the New York City Commission on Human Rights.

Maja Szumarska is an attorney in Gibney’s Intellectual Property Group. She focuses on brand protection and enforcement. She represents many prominent brands in litigation matters involving trademark, trade dress and copyright infringement claims and enforcement actions in federal court.

Bob Tracy is an attorney in Gibney’s Labor and Employment Group. He practices management-side labor and employment law and business litigation. Bob keeps clients informed of changing employment laws and develops strategic employment policies to avoid litigation, maintain a healthy work culture and minimize risk. He has conducted seminars on employment issues including ADA, FMLA, sexual harassment and union avoidance.