Counterfeiting costs businesses billions of dollars each year and the number is rising. Knockoff products can steal sales, create downward pressure on prices, erode profit margins and damage your reputation and goodwill. Our team can help defend your brand and bottom line from unscrupulous counterfeiters.
Watch Grant Fairbairn discuss anti-counterfeiting strategies with Lindsay Soko, the owner Boottique, Inc.
Learn more about anti-counterfeiting litigation strategies from our Fake vs. Real Seminar.
Grant Fairbairn's article “Avoid the Pitfalls Encountered by Makin Bacon,” was published in the Star Tribune on April 17, 2017
What We Do
We develop prevention and enforcement strategies to help protect you against counterfeiters.
On the prevention side, we help you identify and fill gaps in your intellectual property portfolios, protection programs and customs guides that make you vulnerable to counterfeiters seeking to profit from your intellectual property and goodwill. Our Shanghai office can help reduce the risk of intellectual property theft should you choose to manufacture in China. We design custom solutions that range from regional to global in scale, depending on your business objectives. Here are a few examples of prevention services we offer:
- Filing for patent, trademark and copyright protection in the U.S. and counterfeiting hotbeds like China and India.
- Registering trademarks with Chinese Customs to block the exportation of infringing goods.
- Registering trademarks with U.S. Customs to stop infringing goods at the border.
- Negotiating manufacturing, non-disclosure and intellectual property agreements with foreign manufacturers to protect against intellectual property theft.
- Applying for enhanced protection on e-commerce and social media sites, including brand registry and brand gating on Amazon.
If knockoff products do appear on the market, we help stop infringers in their tracks through takedown notices, enforcement actions and litigation. Our team has extensive experience addressing product counterfeiting and piracy both in and out of court. Our services include the following:
- Investigating infringers to discover where they are located.
- Utilizing take-down procedures and cease and desist letters to efficiently remove counterfeit products and pirated materials from e-commerce and social media sites like Amazon, Alibaba, eBay, Twitter, Etsy, Facebook and YouTube.
- Negotiating settlements with larger counterfeiters to remove infringing products from the market and compensate for past infringement.
- Litigating against counterfeiters who refuse to stop and obtaining restraining orders and injunctions against persistent patent, trademark and copyright infringers.
- Seizing goods that bear counterfeit trademarks.
Our team has decades of experience working on intellectual property matters and issues involving the China market. Here are a few recent examples of our work:
- Helped a start-up company assert its patent and copyright assets against counterfeiters selling knockoff products on Amazon, eBay, Alibaba and other e-commerce sites. We prevented the infringers from gaining any traction by taking them down as soon as they appeared, which allowed our client to build its brand without fear of being undercut by cheap, knockoff products.
- Obtained a default judgment against a defendant who was selling counterfeit products on Amazon. The district court found willful patent infringement, entered a permanent injunction against the seller, awarded treble damages and attorney’s fees to our client and held the defendant in contempt when it violated the injunction. We succeeded in removing the counterfeiter’s fake products from the market.
- Brought suit for patent infringement against a large group of related counterfeiters who were selling on Amazon. We obtained a consent judgment against the largest violator and negotiated settlements with the remaining defendants. As a result of the lawsuit, the infringing products were removed from Amazon.
- Brought lawsuits enforcing utility and design patents when counterfeit products from China began appearing in U.S. retail outlets. We negotiated favorable settlements that compensated our client for the infringement and forced changes in purchasing channels to reduce the risk of counterfeits going forward.
- Created and implemented strategies for acquiring patent protection covering a replacement part component of a client’s next generation product. A similar replacement component of the previous generation product had been the subject of knockoffs causing lost profits associated with the prior product.
- Engaged in all aspects of brand protection in the U.S. for a retail jewelry brand, including enforcement actions against knockoffs and brand protection in the Trademark Trial and Appeal Board.
- Utilized take-down procedures and cease and desist letters to remove bootleg and pirated music from Facebook and YouTube, as well as from independent websites operated directly by bootleggers.
News & Articles
January 18, 2018
While it is estimated that counterfeiting costs the global economy more than $250 billion per year, the damage counterfeiters do to brands by offering faulty and sometimes dangerous knock-off products is immeasurable.Read More
November 22, 2017
Each year, anti-counterfeiting initiatives occupy a greater role in intellectual property portfolio strategy—but what are counterfeits, again?Read More
November 17, 2017
Health and safety equipment like 3M 8210 Particulate Respirators have become a popular target for counterfeiters, particularly those in China.Read More
October 25, 2017
Under the Digital Millennium Copyright Act (DMCA), service providers can obtain safe harbor protection from copyright infringement liability by, among other things, designating an agent to receive notifications of claimed infringement with the U.S. Copyright Office.Read More
June 19, 2017
Instagram will soon launch a new tool to help its internet celebrities, or “influencers,” disclose when they are being paid by sponsors.Read More
May 8, 2017
Malicious counterfeiters often hide their identities, making it impossible to serve them through traditional means.Read More
March 27, 2017
On March 22, 2017, the Supreme Court handed down its decision in the Star Athletica v. Varsity Brands case. The dispute turned on the issue of whether the patterns of cheerleading uniforms, including chevrons and stripes, are protected under copyright law.Read More
December 30, 2016
The United States has placed Chinese e-commerce giant Alibaba Group (Alibaba) back on its list of “notorious markets“ that sell counterfeit goods just four years after taking it off.Read More
December 23, 2016
Hydreon Corporation sells a product called FakeTV®, which deters burglars by emitting and projecting light patterns to simulate real television broadcasts. The light patterns make it appear that someone is home watching television when the house is actually empty. In recent years, counterfeit versions of the FakeTV® device have sprung up on Amazon.com and eBay.com. This has become an all-too-common occurrence for U.S. companies.Read More
December 22, 2016
With support from the Department of Justice (DOJ), the U.S. Immigration and Customs Enforcement (ICE) and U.S. Customs and Border Protection (CBP) launched a new program to stop the illegal importation and distribution of dangerous counterfeit consumer electronics at the border.Read More