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Using Trademark Registration Records to Fight Counterfeiting
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Using Trademark Registration Records to Fight Counterfeiting
Counterfeit goods are a huge problem worldwide. The International Chamber of Commerce estimates the value of counterfeit and pirated goods globally to be about $500 billion per year. And that number keeps rising as e-commerce makes it easier than ever for counterfeiters to sell fake goods online.
For companies trying to combat counterfeits, one of the best tools is the trademark registration system. Trademark registrations create a public record that provides valuable information about trademark owners. This data can be used to detect and stop counterfeit sales.
What’s in a Trademark Registration
A trademark registration record includes things like:
- The name of the trademark owner
- Contact information for the owner
- A detailed description of the goods and services the trademark covers
- The date the trademark application was filed
Registration data also gets updated over time with information on renewal dates, address changes, assignments to new owners, and more. All of this is public information that can be easily searched online.
How to Search Trademark Registrations
In the U.S., trademark registration records are kept by the U.S. Patent and Trademark Office (USPTO) in a database called the Trademark Electronic Search System (TESS). Anyone can search TESS for free at http://tess2.uspto.gov/. You just type in a word or phrase and it returns listings of similar trademarks.
It’s also possible to do more advanced searches in TESS based on things like:
- Trademark owner name
- Goods or services covered
- Filing date ranges
- Status of application or registration
So if you wanted to find all live trademark registrations for “Apple” smartphones, for example, you could easily construct that search.
How Brand Owners Use Registration Data
Brand owners leverage registration records in creative ways to track down counterfeits. Here’s a few examples of how the data gets used:
Finding Infringing Domain Names
A company can search domain name registration databases to identify newly registered domains that contain their trademark. This allows them to catch infringing domains early and send takedown notices or file lawsuits. Going after domain names is important because websites are a major platform for selling knockoff goods today.
Monitoring E-Commerce Platforms
Brand owners also monitor e-commerce sites for trademark violations. They regularly search platforms like Amazon, eBay, and Alibaba for product listings using their brand name. When counterfeits get identified, the brand owner can report them to get the listings removed.
Tracking Import Shipments
Customs agencies globally also provide import shipment data that can be checked for counterfeit goods. In the U.S., anyone can access import records through a system called ImportGenius. You can set up alerts for shipments containing keywords related to your trademarks. This allows you to spot counterfeit product shipments coming into the country.
Legal Actions Using Registration Data
When a brand owner discovers a counterfeiting operation, the next step is legal enforcement. Trademark registrations play a key role here as well.
In the U.S, federal lawsuits often get filed under the Lanham Act. To bring a claim under Lanham, you must own a trademark registration. So all that registration data provides the legal basis for going after counterfeiters in court.
Lawsuits enable brand owners to get counterfeit goods seized by law enforcement. They can also get court orders requiring websites, domain names, and social media accounts used for counterfeiting to be transferred to the brand owner.
In serious cases, brand owners work with law enforcement directly to bring criminal charges against large-scale counterfeiting operations. Here again, the trademark registration proves ownership of the brand being knocked-off.
Using Registration Data Proactively
Progressive brand owners are moving beyond reactive enforcement against counterfeits. They’re now using registration data proactively to prevent fakes from even entering the supply chain.
More companies are investing in product serialization and traceability systems, for example. This involves putting a unique serial number on every product during manufacturing. The brand owner then registers the serial numbers in a database.
Distributors, retailers, and even end consumers can check the serial number on a product against the database to verify authenticity. If the number isn’t registered, the product is likely counterfeit. This allows fakes to be spotted instantly before they have a chance to enter the legitimate supply chain.
The Game is Always Evolving
While trademark registration data remains an essential tool for brands to combat counterfeiting, the game is always evolving. Counterfeiters find new ways to sell fakes, and brands must adapt in response.
The rise of social commerce on platforms like Instagram, TikTok, and Facebook is the latest battleground. Enforcement on social media remains a challenge given the volume of content and limits on automation. But brands are testing new monitoring techniques focused on visual recognition of counterfeits showing up in videos and photos.
Blockchain verification of goods is another emerging technology starting to get adopted. The key is finding solutions that are scalable across global supply chains with hundreds of thousands of products.
Even as the tactics change, trademark registration records will likely remain a foundational tool for brands fighting fakes. But companies must keep innovating with new technologies if they want to get ahead of the counterfeiters.
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