Counterfeit Corner

• Published date: 22 March 2022
• Subject Matter: Intellectual Property, Media, Telecoms, IT, Entertainment, IT and Internet, Copyright, Trademark
• Law Firm: Dickinson Wright PLLC
• Author: Mr John L. Krieger and Tenesa Powell

Brand Protection and Fighting Fakes Online

The shift to online marketplaces has created an incredible boom for some, and significant loss to others. Branding has become more important than ever, particularly in developing an online presence through search engines, various online platforms, and social media. Furthermore, the rise of the "influencer" has opened additional opportunities to deliver brands and products to targeted demographics. However, these great advances also come with some disadvantages that can become quite onerous and problematic. Fakes and counterfeits are part of these unwelcome advances, and seem to have come out of the "dark back alleys," finding a "legitimate" storefront on various websites and platforms. Unfortunately, a brand owner must continually "police" its marks or suffer a loss in value and recognition, and, potentially, loss of the brand.

The ever-expanding Internet presents a daunting task to any brand owner trying to police its marks. Due to the protections extended to "Internet content providers" under Section 240 of the Communications Decency Act, most websites and platforms are absolved of liability for infringing third-party content. As a result, the burden to police falls on the mark owner. There are a number of companies and law firms that are able to harness software and manpower to scour the Internet on behalf of brand owners, but those routes can be cost prohibitive for some. However, there are number of easy steps any brand owner can use to protect its brand online.

Online Marketplace Protection

Nearly every mainstream marketplace and social media platform has Acceptable Use policies, which provide procedures for reporting intellectual property infringements. Despite the proliferation of counterfeit goods and fake accounts, there are surprisingly few companies that offer monitoring services. The most prominent are Amazon and Facebook.

The Amazon Brand Registry (The Registry)¹ is a free service, which allows the brand owner to search for content using images and keywords and report violations. In order to utilize The Registry, the brand owner must have a federally registered trademark that appears on products or packaging. The Registry requires verification of the rights by the brand owner listed with the USPTO on the registration in order to create the account. The owner must apply for registration and will need to provide trademark registration number, product categories, and a list of countries where products...