INTELLECTUAL PROPERTY (IP) BRAND PROTECT

Intellectual Property (Brand Protection)

In general, brand protection is the conscious attempt to protect all the intellectual property (IP) – including copyrights, design rights, inventions, patents, trade dress, trade secrets, trademark and the like – that comprises a particular brand and any associated brands from what has been generally named "brand abuse" – consisting generally of numerous nefarious practices, some of which may be: counterfeiting (creating an extremely similar product or service, of a lesser quality than the original, to be sold for less than the original, as if at a bargain); copyright piracy (using someone else's image, music, words, or any work which has received copyright protection, without the copyright owner's permission); (products manufactured abroad and imported without the consent of the trademark holder, which are extremely similar in appearance to the products manufactured by the trademark holder, although the foreign manufacturer does not represent that such foreign products are those manufactured by the trademark owner, so such foreign products are technically not counterfeits, but they are generally of a lower quality compared to those manufactured by the trademark owner, so they are sold at a lesser price); patent theft (using someone else's invention or process which has received patent protection, without the patent owner's permission); rogue websites (websites created for illicit purposes, such as to implant malicious or tracking software in browser's or to fool a visitor into voluntarily providing personal information, such as: cybersquatter websites – that make claims on domain names already in us, in order to shake down the actual domain name owner for money and to leverage the trademarks of the legitimate brand by deceit); imitator websites (very accurate imitations, complete with pirated images of legitimate products of the brand, that attempt to imitate the legitimate website as closely as possible, in order to fool visitors into purchasing non-existent items of the legitimate brand, so the visitors will provide personal information through the use of their credit cards, the money for which is redirected to a receiving website controlled by the imitators; and, typosquatter websites (that entice visitors into voluntarily providing personal information by filling out online forms, such as for supposed surveys, or for customer feedback); social media impersonation (in which the bad actors create false merchant pages, news articles, text messages, user pages or the like, within a particular social media platform, designed to either fool the consumer or visitor for some purpose, or to trick the consumer or visitor into revealing some personal information or spending money voluntarily); and, (using redirection scripts or misspelled URLs targeted at browsers or embedded in advertisements, emails, images, links or the like of both legitimate and rogue websites to hijack visitors unknowingly to illegitimate rogue websites).

Brand protection services are designed to counteract and nullify actions that could potentially be brand abuse through the use of advanced technologies to detect such actions, validate whether any such actions may be such abuse, report any such detected and validated actions as actual abuse, and then report any such detected and validated actual abuse to the proper authorities for countermeasures and enforcement.

Some of the technologies used by brand protection services to provide countermeasures and enforcement may be: brand protection software platforms (BPSPs); image recognition (for use with bots which continuously search the internet and web for images pirated by those engaged in brand abuse to attract visitors by using the same images employed by the legitimate brand to describe its products); keyword monitoring (for use with bots which continuously search the internet and web for metadata contained in files used by those engaged in brand abuse to attract visitors by using the same descriptive words and phrases employed by the legitimate brand to describe its products); machine learning (the ability of computers, using systems called neural networks, to repeatedly identify patterns and correlations in data through artificial intelligence); and, smart user experience (creating a graphic user interface – GUI – that is simple to use and clear in execution, to avoid any confusion by the user).

There are also some common-sense actions brands can take in order to decrease the likelihood of brand abuse, such as: educating potential customers or users about the quality aspects of the brand (so such consumers or visitors may be more-likely to spot counterfeits – also known as "knock-offs"); ensure that all employees have a comprehensive understanding of the brand identity and its importance to the enterprise; entering into non-disclosure agreements (NDAs) with all strategic partners who may have access to any brand-related IP; establishing a strong social media presence (so users will be more comfortable seeing the brand more often); proactively maintaining maximum control over the brand, through corporate policies and internal controls; registering all IP with the appropriate authorities, registering all domain names with the appropriate authorities; and, using contractual provisions to impose advantageous terms and conditions in distribution, employment, sales, and supply agreements (and plan for contingencies regarding the obligations that will remain after the contractual relationship has ended).

Typical brand-protection tasks, such as: consultation for cancellations, domain name enforcement and policing, ecommerce brand enforcement and monitoring, false advertising consultation, Madrid Protocol, unfair competition; initiating and defending emergency and permanent injunctions, enforcement actions, oppositions, securing and enforcing monetary judgments against infringers, and litigation; legal support for proceedings before the U.S. Trademark Trial and Appeal Board (TTAB); online brand monitoring.

Typical brand-protection ancillary tasks, such as: ad copy review; domestic and international trademark intellectual property (IP) (copyright, inventions, music, patent, trade dress, trademark) portfolio management; license recordation; licensing; sweepstakes copy review; mediations; mergers and acquisitions (M&A); nontraditional trademarks; outsourcing; technology transactions; trademark acquisition, assignment, conflict resolution, licensing, ownership, registration, opinion letter review, searches, selection.

Compliance with guidelines, laws, regulations, rules and statutes of domestic agencies, governments and trade associations such as the Art Copyright Coalition (ACC), Consumer Products Safety Commission (CPSC), Controlling the Assault of Non-Solicited Pornography And Marketing Act (CAN-SPAM), Customs and Border Protection (CBP), Electronic Retailer's Association (ERA),Federal Trade Commission (FTC), Food and Drug Administration (FDA), International Anti-Counterfeiting Coalition (IACC), International Trademark Association (INTA), Lanham Act, National Intellectual Property Rights Coordination Center (NIPRC).

Compliance with guidelines, laws, regulations, rules and statutes of international agencies, governments and trade associations such as the Article 6ter, Berne Convention, Global Brand Database, Lisbon System, Madrid Agreement, Madrid Protocol, Madrid System, Merchandise Marks Act, Nairobi Treaty, Nice Agreement, Nice Classification, Paris Convention, Singapore Treaty, Privacy and Electronic Communications Directive 2002/58/EC on Privacy and Electronic Communications (ePrivacy Directive), Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT), Trade Marks Act, Trademark Law Treaty, Vienna Agreement, World Intellectual Property Organization (WIPO).

Representation for brand protection against online merchant platforms such as Alibaba – through its proprietary , Amazon, Apple, Best Buy, Bonanza – through its proprietary , eBay – through its proprietary , Costco, Etsy, Home Depot, Walmart, Wayfair, and the like, which may allegedly be providing outlets for selling counterfeit or stolen branded merchandise of domestic and international infringers, through: contacting such merchants personally and demanding the immediate removal of the pages of such infringers, and banning such infringers personally from such platforms; contacting Federal state and local authorities, relevant better business bureaus, news publications, online consumer-oriented blogs; negotiating with such merchants; sending immediate takedown demands to the corporate headquarters of such merchants; threatening or initiating legal actions (such as emergency and permanent injunctions, or civil actions for monetary judgments); demanding the removal of the infringer's page on the platform, as well as banning the infringer from returning to such platform either directly or in the guise of a new legal entity.

Representation for Lanham Act claims regarding false advertising, false endorsement and trademark dilution.

Consultation regarding the "spectrum of distinctiveness" (SoD), which is supposedly an objective standard utilized by the United States Patent and Trademark Office (USPTO) to distinguish between the individuality and uniqueness of the various types of trademarks proposed to the USPTO, such as: fanciful trademarks (those very strong trademarks that are immediately-recognizable and readily-admissible for approval by the USPTO); arbitrary trademarks (trademarks that may have no relation to the product itself, the classic example of which is the Apple computer company, which uses the name of a fruit); suggestive trademarks (admissible trademarks, such as those where in which the product name suggests the product use, such as "Smooth Shaving Gel"); descriptive trademarks (inadmissible proposed trademarks, in which the name or logo is identical to the product, such as "White Paper"); and, generic trademarks (those inadmissible very weak proposed trademarks, with no particular distinguishing characteristics, that are generally denied approval by the USPTO because such trademarks might tend to cause confusion in the general public, such as an airline company wishing to trademark a name and logo for "The Airline Company").

Consultation regarding the "Polaroid" factor test, which is a guideline used by the courts to determine whether or not trademark infringement has occurred, and consists of descriptive points (the courts do not have to find all of which in a set of facts in order to make a determination of infringement): actual confusion by the public regarding the two products or services; degree of similarity between the two trademarks at issue; intent of the infringer in adopting a trademark very similar to the plaintiff's prior trademark; recognition of the respective trademarks; respective quality; similarity between the respective products or services; and, sophistication of the purchasing public.

Typical tasks related to various aspects of trademarks: abandonment; application filing (for logos, names, phrases); infringement defense or prosecution; cease and desist letters; searches; USPTO action responses.

Legal support for making appeals to the Trademark Trial and Appeal Board (TTAB) when the USPTO had previously rejected the proposed registration of a new trademark.

Consultation regarding trade dress, which is a specific, consistent design element for a product (but the style or “look and feel” of a product is not eligible for trade dress protection), but which cannot be functional (a design feature is considered to be functional if is essential to the use or purpose of the product, or if it affects the cost or quality of the product, or if it requires for competitors to also use the feature at issue for the product to function correctly).

Representation in brand protection litigation, such as litigation for commercial issues, counterfeiting, domain names, infringement (for copyrights, patents, trade dress, trade secrets, trademarks and the like), false advertising, fraud, Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Domain-Name Dispute-Resolution Policy (UDRP) issues, libel, misrepresentations, slander.

Filing e-recordation documentation and e-allegation submissions with the U.S. Customs Border Protection (CBP) through the intellectual property rights e-recordation (IPRR) processes.

Negotiating and drafting various agreements, contracts and documents for assignments, cease & desist letters, collaboration, confidentiality, cybersecurity services, engineering services, intellectual property, joint venture developments, leases, licenses, non-disclosure, professional services, real estate purchases and sales, royalties, security services, software as a service (SaaS), technical services, patent support documentation.

Legal support for activities to counteract the distribution of counterfeit and knockoff consumer goods, the prosecution of copyright and trademark infringement, illegal parallel trade and importation, such as active on-line monitoring, arranging for and conducting test purchases, identifying and logging suspect websites and products, and monitoring product reviews, reporting to internal brand executives and external authorities, and tracking the progress of brand protection efforts.

Ensured consistency and strategic alignment with corporate policies regarding brand protection, such as active detection protocols and takedowns, cooperation with the appropriate authorities, the development of internet and legal deterrents, investigations and prosecutions.

Implemented and managed new brand protection corporate policies, procedures, protocols and strategies.

Established domestic and international brand protection teams with specialized expertise throughout the enterprise, focused on enforcement of protections for various flagship brands.

Managing domestic and international cross-functional brand protection teams for internal coordination of brand protection activities.

Review of internet and written and advertising and marketing strategies for compliance with applicable laws.

Authored and disseminated a brand protection playbook with instructions and resources various brand protection strategies.

Worked with manufacturing experts to develop anti-counterfeiting strategies.

Developed an internal notification system to inform all domestic and international offices of the enterprise and certain strategic partners about brand protection breach incidents, and to provide guidance for contacting the relevant internal personnel and external authorities.

Identified and implemented anti-counterfeiting strategies for packaging and products.

Legal support for the development strategies for implementing test buys in various markets with subsequent testing of the purchased products to determine authenticity.

Management of small-scale and large-scale IP portfolios.

Provided legal support regarding IP issues related to assignment, data privacy, engineering, licensing, litigation, management, M&A, trade secrets and other IP rights.

Management of internal domestic and international investigational of brand protection breach incidents, and related negotiations attempting to resolve such brand protection breach incidents amicably, to avoid litigation whenever possible.

Review of advertising copy, marketing presentations, packaging design, products, proposed website pages and sales campaigns for potential brand protection vulnerabilities.

Provided training sessions for design, marketing, management, production and sales teams, regarding brand protection and IP issues.

Developed and implemented digital content protection enforcement corporate policies, protocols and strategies.

Coordinated with domestic and international industry trade groups, licensors, third-party anti-piracy service providers to maximize anti-piracy enforcement efficacy.

BPSPs are collections of technologies composed of algorithms, bots, databases, image recognition software, social media, text recognition software and other innovations, and are utilized by corporate brand managers to: analyze online product and pricing details to ensure that information shown on websites is accurate and complies with corporate standards; coordinate any required enforcement actions with online merchants; enforce brand rules and corporate policies; identify infringements and track violations of selling agreements, such as Minimum Advertised Price (MAP) requirements; monitor online merchants; manage online information regarding specified branded products and services.

BPSPs are generally standalone products, which can then integrate with cloud databases, e-commerce platforms, pricing software, product information management software platforms (PIMSPs).

Research, testing, use, recommendation, specification and procurement of various BPSPs, such asADanalytix, Adthena, Anti-Counterfeiting Solution, Authlink, Axur One, BirdEye, Bolster, Brand Alignment, BrandShield, Brandverity Paid Search Monitoring, CaseMate, Chorus, Continux, Copytrack, Dataweave, Domain Track, Echosec Systems Platform, Fakesburster, Hubstream, Imatag, Investigation Manager, LashBack, MAP Monitoring & Case Management, Market Track Brand Protection, NeuroTags, OnBrand, Paid Search Monitoring, Pasabi, PerformLine, Pointer BP, Price2Spy, PriceSpider, Prisync, Qualtrics Brand Experience, Red Points, Ruvixx Brand Protection, SafeGuard Cyber, The Search Monitor, TrackStreet MAP Compliance Software, Uniqolabel, Wiser Solutions.

Last updated 201110_2240