Overview
For additional guidance, please refer to Steptoe's COVID-19 Resource Center.
While businesses are facing growing concern surrounding global supply chain issues, the fear surrounding COVID-19 is fueling a spike in demand for both essential and non-essential products among public consumers. With crisis-driven consumer demand comes growing market for counterfeits. Today, mandatory statewide stay-at-home orders, the changes in business sales models, and the increase of secondary market options for consumers are all contributing to the increasing sale of illicit goods and services. To guard against opportunistic trademark counterfeiters, ensure you have registered your trademark, enslist the oversight of US Customs and Border Patrol, and use watch services and employee rewards programs to police your marks.
Even before the COVID-19 wave, there has been a dramatic increase of counterfeit goods in recent years, mainly due to the growth of e-commerce platforms and third-party online marketplaces that convey a deceptive air of legitimacy.
Strong brands built on name recognition and brand loyalty are prime targets for counterfeits in times of crisis because infringers are likely to take advantage of the trust and goodwill those brands have built for their consumer base. At times of public health crises, in which treatment or prevention options are limited, it is crucial to recognize that brands in pharmaceuticals, dietary supplements, and health and medical supplies are not the only businesses susceptible to counterfeiting. Counterfeiters may also exploit all other less discerning types of products and services.
For example, Amazon has reportedly removed more than one million products from its digital store that are fraudulently branded as coronavirus cures or safeguards. In addition, The New York Times reported that the president's administration estimates more than 100,000 packages a day that could defraud—or harm—Americans enter the United States through China. These packages might contain anything from counterfeit luxury goods to illicit drugs including fentanyl.
Trademark Registration
There are various avenues to guard against opportunistic trademark infringers, but having registered trademark rights is often a prerequisite to enforce against infringements. Electronic filing remains available at this time with the United States Patent and Trademark Office and other intellectual property organizations, such as the Internet Corporation for Assigned Names and Numbers and the World Intellectual Property Organization.
Customs and Border Patrol Recordings
Registered trademarks are eligible for recording with US Customs and Border Patrol (CBP). A recorded registration allows CBP agents and officers to seize counterfeit goods attempting importation. In addition to notifying brand owners of seizures and allowing access to samples for brand owner investigations, CBP agents and officers will contact brand owners if there is a question as to whether goods they detained are counterfeit. Brand owners have the chance to inspect photos and, in some cases, samples, of the detained goods to assist CBP in determining whether to seize the goods or release them.
Watch Service
There are creative ways to detecting counterfeits, including rewarding employees for spotting and reporting potential infringements. For a more comprehensive protection, businesses should consider watch services to monitor trademark registration applications and domain name registrations to effectively protect trademark rights both locally and regionally.
