Counterfeiting Trademarks

News & Analysis as of

Tory Burch Protects Her Brand

The barrage of counterfeit jewelry products bearing the “Isis Cross” will cease! After more than two years of battling with counterfeiters, Tory Burch, LLC and its subsidiary (“Tory Burch”) secured a $41 million judgment and...more

Washington’s NFL Team and U.S. Customs

Last week the NFL franchise that plays football near — but not in — our Nation’s Capital, was dealt another significant legal and public relations blow that would have any rational brand owner working overtime on its...more

MarkIt to Market - May 2015

The May issue of Sterne Kessler's MarkIt to MarketTM newsletter covers the negative impact of counterfeiting on e-commerce websites, recent changes in Russian trademark law, and an updated list of the Sunrise periods...more

Law à la Mode - Edition 16 - May 2015 (Global)

In This Issues: - Key Considerations: For Negotiating Electronic Point Of Sale Solution Agreements - Fashion Forward And Tech Savvy: The Co-Branding Of Wearable Technologies - The Internet Of Things: The...more

Law À La Mode - Special Edition – INTA 2015

In This Issue: - DUBAI’S d3: National talent meets international brands - COMBATTING COUNTERFEIT GOODS ONLINE: Are Alibaba’s anti-counterfeiting efforts enough? - A GUIDE TO PROTECTING A NEW FASHION ITEM: Our...more

MarkIt to MarketTM | April 2015

In This Issue: - I Second that e-Motion: Protecting Motion Marks - USPTO Begins Accepting International Design Applications - Attending INTA Annual Meeting - gTLD Sunrise Periods Now Open - Excerpt...more

Global Trademark Protection — 5 Practical Considerations

When Tim Berners-Lee developed the World Wide Web in 1990 as a tool to share information among specialized researchers, he likely did not anticipate the degree to which his invention would radically change — in just a few...more

New Tool to Fight Counterfeiting – Customs Recordation Now Available in Canada

Many U.S. brand owners already work with U.S. Customs and Border Protection (CBP), a division of the U.S. Department of Homeland Security, to keep counterfeit products out of the U.S. CBP examines cargo at more than 300 ports...more

MarkIt to Market - February 2015

The February issue of Sterne Kessler's MarkIt to MarketTM newsletter provides takeaways from the Supreme Court's Hana Financial decision, identifies a new anti-counterfeiting tool for owners of Canadian trademarks and...more

The Fight against Counterfeit Products in Canada Just Got Easier

Canada’s new Combating Counterfeit Products Act officially took effect on January 1, 2015. As part of the ongoing overhaul of Canada’s much neglected intellectual property regime, this new tool for content and brand...more

Business Round Up: The News and the Views

Thomas Pink Ltd v Victoria’s Secret UK Ltd [2014] EWHC 2631 (Ch) Two particular points for brand owners to take away from the decision: 1. If faced with an invalidity challenge on the grounds of s3(1)(b) or (c)...more

Converse: Stomping Out Counterfeits through Int’l Trade Commission Proceedings

Earlier this week, Converse launched an all-out offensive to combat what it considers counterfeit and knock-off versions of its Chuck Taylor All-Star line of sneakers. Reports peg the number as at least 22 separate lawsuits...more

Anti-counterfeiting: protecting your brand – why it is important and how to do it

Intellectual property (“IP”) is often the DNA of a business. A brand can be integral to reputation, revenue streams and goodwill. However, protecting IP is becoming increasingly difficult, particularly with the proliferation...more

Law À La Mode: Special Edition – INTA 2014

In This Issue: - MODERNISATION OF THE TRADEMARK SYSTEM: Is Europe on the cusp of trademark law reform? - FROM RUSSIA WITH LOVE: Brand owners face unique challenges in Russia - DETAINING COUNTERFEIT GOODS: New...more

Law À La Mode - Issue 13 - April 2014

In This Issue: - PRIVACY BY DESIGN? FASHION FLAIR TRANSFORMS WEARABLE TECHNOLOGIES: The rise of the wearables – and the data protection challenges they bring - EFFECTIVELY DELIVERING IT SERVICES IN THE RETAIL...more

Rolex Says "Time is Up" for alleged Craigslist Counterfeiter

On February 5, 2014, Rolex Watch U.S.A.,Inc. (“Rolex”) of New York, New York, filed a complaint against Nicholas Peter Karettis (“the defendant”) of Tyrone, Georgia, alleging Trademark Counterfeiting and Infringement under 15...more

Intellectual Property and Technology News - Issue 20, Q4 2013

In This Issue: - CHINA AMENDS TRADEMARK LAW: PRACTICAL IMPLICATIONS FOR BRAND OWNERS - SUPREME COURT CORNER - A CASE FOR COUNTERFEIT TRADE DRESS - MANAGING YOUR IP ACROSS BORDERS - Excerpt...more

Trade Dress Watch: A case for counterfeit trade dress

Can a product which imitates the look and feel of another product, but does not use the trademarked brand name, still be considered a “counterfeit” product under United States law? Owners of popular brands (like Louis Vuitton...more

Louis Vuitton - Almost Famous? (Australia)

The Federal Court recently handed down judgment in Louis Vuitton Malletier v Sonya Valentine Pty Ltd [2013] FCA 933. Louis Vuitton Malletier (Louis Vuitton) alleged that Sonya Valentine Pty Ltd (Sonya Valentine) had...more

Building a Smarter Counterfeit Strategy

When I have watched the ad below around some savvy marketing and supply-chain management folks, the reactions have been generally been in the “wow – that’s really cool” vain. IBM seems to really be doing something right...more

Poor Quality is No Defense to Trademark Infringement

On May 31, 2013, the U.S. District Court in the Northern District of Indiana ruled in favor of Plaintiffs Coach, Inc. and Coach Services, Inc. ("Coach") and against Defendants The Treasure Box, Heather Hiatt and Michael Hiatt...more

Counterfeits, Trademark Infringement, and Contributory Liability: Your Vendors are Your Problem

Counterfeit goods seem to be everywhere, and efforts to police their ubiquitous existence often seem futile. However, a recent decision involving counterfeit Coach products should inspire those who host vendors of counterfeit...more

Louboutin Sees Red Again: Protecting Color as a Trademark

Christian Louboutin filed suit last week in Federal District Court in New York against Charles Jourdan Fashion Footwear and unnamed companies and John and Jane Does for trademark counterfeiting and infringement and other...more

Novel Trademark Counterfeiting Count Nixed

In Brief - Where goods bearing a genuine trademark are altered and resold without altering the mark itself, such conduct does not constitute trafficking in counterfeit goods. Actual use of a counterfeit mark is a...more

Anti-counterfeiting strategies in the United States

Counterfeiting is a critical problem for trademark and copyright owners (‘IP owners’) affecting all industries, from pharmaceuticals and medical devices to electrical and auto products, toys and fashion items. To effectively...more

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