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Sponsored by Lorman Education
Product ID: 408916EAU
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How to Stop and Remove Online Counterfeiting and Infringements

OnDemand Webinar (87 minutes)

Help your clients protect their intellectual property and enforce their rights in halting the sale of counterfeit and infringing goods.As the internet has become global in scope, nefarious actors such as counterfeiters have expanded their operations beyond traditional outlets such as flea markets, street corners, and mall kiosks. Online counterfeiters are difficult to identify, receive payments digitally, operate across numerous digital locations, and they are able disappear with ease. They also benefit from some of the same technological advances utilized by brand owners, including search engine optimization, the use of images pasted from legitimate digital locations, and the temptation of retailers to host sellers who generate revenue. This topic helps identify steps that brand owners can take, either with new brands or established ones, to register, monitor, and enforce their valuable trademark and copyright rights in the setting of cyberspace.


David Friedland, Friedland Vining


Trademark Registration Basics

• Registration Requirement for a Counterfeiting Claim

• Counterfeiting vs. Infringing Conduct

• State and Federal Registration Options

Online Counterfeiting Basics

• Why Counterfeiting Is an Issue (to a Brand Owner and to the Public in General)

• How to Track Online Counterfeiting Issues

- Trademark Watch Programs

- Online Monitors (Outside Vendor or Site Owner Programs)

• Registering Marks With Online Retailers' Anticounterfeiting Programs

• Identifying Online Retailer and Website Host Policies for Dealing With IP Infringements

• UDRP If Registered Brand Also Appears in Domain Name Hosting Counterfeiting Operation (i.e., Not on a Third-Party Retailer Site)

• Register Trademarks/Copyrights With Customs to Stop Flow of Product Across Border (Free Policing)

Prelitigation Takedown Options

• Reporting Directly to Retailers and Seeking Seller Identifications in the Case of Third-Party Retailers

• Filing UDRP to Shut Down the Domain, If Applicable

• Contact Website Host in Case of Direct Sales by Counterfeiter (Use DMCA If © Available)

• Cut off the Funds (Paypal®, etc.)

Enforcement Through Litigation

• Counterfeiting/Copyright Infringement Lawsuit

• Law Enforcement If Criminal Interest Piqued

• Injunctive Relief

Public Examples and Best Practices for Brand Owners

• Illustrative Cases

• Belt and Suspenders - ™ and ©

• Foster and Maintain Relationships With Law Enforcement

• Pay Me Now or Pay Me Later