May 21, 2015

Knocking out the Knock-Offs

by Guest Blogger

Gucci, Yves Saint Laurent, Puma, and other brands owned by the French company Kering SA filed a lawsuit last week in New York, alleging that the Chinese online giant Alibaba Group knowingly let counterfeit goods be advertised and sold on its website to United States customers. Alibaba is an online marketplace that recently went public on the New York Stock Exchange with the largest IPO ever. For years, Alibaba has been harshly criticized about whether they did enough to block the sales of fake goods, including criticism from the Chinese government.


Alibaba is not alone. Amazon, eBay and other online retailers all struggle with differentiating the brand name product from the fake in an online environment where photos don't always match the product. Consumers need to remember the rule BUYER BEWARE if you are buying from an unknown seller.


Counterfeiting is a state and federal crime in addition to subjecting the counterfeiter to civil liability for trademark infringement and statutory counterfeiting. Consumers can report retailers selling fakes in the United States at While we think of counterfeits as purses and jewelry, counterfeits span all product categories, including software, baby formula, and medications.

Over the years, retailers have developed programs to handle disputes about fake products and other trademark infringements occurring over the sites. The procedures differ, but typically, you can file a complaint and ask to have a product listing removed from the site if it violates your trademark. These kinds of disputes are easier to resolve if you own a trademark registration. While some websites allow you to make a complaint based on unregistered trademark rights, website operators are often hesitant to stop someone from selling their products if you cannot prove you have superior rights to the mark. Sometimes, copies of your trademark registrations are required. Even if you have a registration here, however, you may not necessarily be able to get a listing removed from a Chinese retailer. Typically, trademark rights are territorial and stop at the borders. Online advertising isn't always contained neatly by geographic borders. Having international trademark registrations can help.

Because most other jurisdictions grant trademark rights to the first person to register a mark, businesses should register their trademarks in other countries where they sell products, where manufacturers and distributors are located, and where licensees are located to reduce the risk of someone registering your brand out from under you.

If you have a U.S. trademark registration, you can also record your registration with Customs and Border Protection and get on a database to try to prevent foreign counterfeits from entering the United States.

In case you are wondering if that iPhone® you bought online is legit, here is a video explaining how to spot the fake.