Counterfeiting Claims and Remedies | CLE Course

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Course Details

Course Information

smart_display Format
On-Demand
signal_cellular_alt Difficulty Level
Intermediate
work Practice Area
Trademark and Copyright

Date & Time

event Date
Friday, January 26, 2024
schedule Time
1:00 p.m. ET./10:00 a.m. PT
timer Program Length
90 minutes

Credit Information

This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00

CLE

ALL

This CLE webinar will guide IP counsel on issues related to counterfeiting and the available remedies. The panel will review various counterfeiting cases and discuss how they fit under the Lanham Act. The panel will address how the courts have addressed counterfeiting cases and their various approaches. The panel will also offer best practices for navigating the counterfeiting minefield.

Faculty

Jessica B. Sparkman

Partner

Jeffer Mangels Butler & Mitchell LLP

Ms. Sparkman represents clients in a variety of industries in all facets of trademark, copyright, and trade secret law, including selection and acquisition, protection, federal trademark application and registration, opinions, portfolio management, enforcement, co-existence and settlement agreements, domain names, and litigation. She has experience managing portfolios of more than 2000 trademark registrations, has applied for or maintained trademark registrations in more than 150 countries, and has managed a global trademark monitoring and enforcement program involving hundreds of proceedings and negotiations in more than 50 countries. Ms. Sparkman counsels clients about agreements to acquire, sell, and protect intellectual property, including assignments, acquisitions, licenses, and non-disclosure and confidentiality agreements, and has performed due diligence for clients in numerous large transactions. She also litigates trademark, unfair competition, copyright, patent, trade secret, and privacy rights cases in state and federal court, and has extensive experience practicing before the TTAB.

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Rod S. Berman

Partner, Chair of Intellectual Property Group

Jeffer Mangels Butler & Mitchell LLP

Mr. Berman focuses on patent, trademark, trade dress, copyright, unfair competition and internet responsibilities. His practice includes counseling, litigation, opinions, licensing, acquisition and prosecution. Mr. Berman represents many nationally and internationally known clients, and has been involved in a number of published patent, trademark and copyright cases in a wide variety of industries. He has worked on a broad range of matters including those involving aircraft, apparel, automotive, beauty care, bicycles, biotechnology, cannabis products including CBDs, hemp and extraction techniques, celebrity endorsement, computer-related business methods, dietary and nutritional supplements, electrochemistry, food and restaurants, health care, inflatables, insecticides, jewelry, medical devices, packaging, pharmaceuticals, polymers, pressure sensors, retail, special effects, sports and entertainment, and toys.

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Description

Recovering meaningful monetary awards in Lanham Act cases is challenging, even where a likelihood of confusion is proven. But, in cases of infringement that involve the use of a counterfeit mark, the Lanham Act provides for special remedies, including statutory damages or mandatory treble damages and attorneys' fees. Requests for these special remedies in a complaint can improve your clients' chances of obtaining an early and favorable settlement, assist in obtaining larger awards in cases of default, and increase monetary awards after trial. It is important, therefore, to know whether your case involves the use of a counterfeit mark.

In the paradigmatic example of counterfeiting, illicit sellers offer cheap knock-offs that attempt to copy "stitch-for-stitch" every aspect of a genuine good. Many district courts have found that the Lanham Act's special remedies for counterfeiting are available only in such cases. Indeed, until recently, McCarthy's treatise suggested this as well. To date, however, no appellate court has endorsed this approach. And, the plain language of the Lanham Act does not support this interpretation.

In fact, the Lanham Act's special remedies for counterfeiting are available in any case of infringement "involving" the use of a "counterfeit mark." A "counterfeit mark" is a mark that is identical, or substantially indistinguishable from, a registered mark and applied to the same type of goods as in the registration. Thus, the Lanham Act's special remedies for counterfeiting should be available in any case of infringement involving an identical mark, even if the goods to which it is applied, or their packaging, differ in appearance from the mark owner's goods.

The Ninth Circuit has recently suggested that this analysis is correct and the relevant section of McCarthy has recently been updated to reflect that the relevant issue is the similarity of the marks and not the similarity of the parties' products. The issue is presently before the Fifth Circuit Court of Appeals as well.

Listen as our authoritative panel of IP attorneys examines the special remedies available in cases involving counterfeit marks, discusses the relevant statutory language, reviews various district court cases and discusses how they fit, or do not fit, under the statutory language of the Lanham Act, as well as outlines current developments in this area. Finally, the panel will offer best practices for navigating the counterfeiting minefield.

Outline

The Lanham Act's special remedies for counterfeiting
Statutory language and definitions
Inconsistent district court approaches and the requirement for "stitch-for-stitch" copying
Recent developments
Best practices