Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX. The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights. The firm also provides a wide range of technology, internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domaindomain name dispute resolution. Additional information about the business law firm and its attorneys may be found at www.klemchuk.com.

Record trademark and copyright registrations as well as trade names with the U.S. Customs and Border Patrol (the “CBP”) and upload a Product Identification Guide, if applicable.

CBP will monitor the import of products for these trademarks, copyrights, and trade names.

CCounterfeit products will be detained. CBP will inform the rights owner. Goods may be seized, forfeited, and destroyed and the importer may be subject to substantial fines. CBP will provide the rights owner with detailed information about the parties involved in the importation. Rights owner can pursue legal action.

Patent owners can petition the International Trade Commission to initiate Section 337 exclusion proceedings against imported products that infringe on their patent rights.

Stop Infringement at the Border

To combat copyright and trademark counterfeiting, Congress recently passed the “Prioritizing Resources and Organization for Intellectual Property Act of 2008 (“PRO-IP”). PRO-IP requires courts to award treble damages and attorneys fees where a violation results from the intentional use of a counterfeit trademark, or where one provides goods or services that intentionally assists others in counterfeiting.

Employing the New PRO-IP Law

Stopping Infringement on eBayand Social Networking Sites

Rights owner first registers with eBay and upon knowledge of an infringing article being offered for sale on eBay, the rights owner fills out a Notice of Claimed Infringement (NOCI) form. The seller is given an opportunity to provide a sworn Counter-Notice in response. The rights owner will have 10 days to institute a legal action to restrain further sales.

FFacebook, LinkedIn, Twitter, and other social marketing sites can also be hot spots for infringement. However, these sites have procedures in place to assist rights owners in handling infringement, which should be taken full advantage of.

Use Pre-Suit Depositions toObtain Early Discovery

Texas law is unique in that it allows a litigant to file a petition to seek pre-lawsuit depositions. Under Texas Rule of Civil Procedure 202.1, a person may ask the court for an order authorizing the taking of a deposition for use in an anticipated suit or to investigate a potential claim or suit.

Protecting Consumablesfrom the Gray Market

Rights owners should implement product control and tracking procedures for their foreign manufacturers and distributors to prevent unauthorized “back door” transactions. Rights owner should take necessary action, including terminating ties with the associated foreign manufacturer/distributor. Rights owners may also pursue an exclusion order when they become aware of gray market goods.

BBrand owners should take advantage of a potential strategy employing an important exception to the first-sale and exhaustion doctrines, which allow rights owners to enjoy more control over their foreign manufactured products than their domestically manufactured products.

Use Copyright Registrationto Stop Knock-Offs

Incorporate a registered copyright into the product or a registered trademark, particularly a logo. A copier is likely to copy “too closely” picking up the copyright or logo into the mold, thereby including it in the knock-off product. This provides grounds for copyright and trademark infringement claims, both of which support injunctive relief as well as impoundment/destruction of infringing articles. The copyright claim also allows for the recovery of attorney’s fees and statutory damages if the work is registered pre-infringement.

Delaying filing suit and moving for injunctive relief significantly decreases the likelihood of obtaining injunctive relief against an infringer. Due to the broad discretion this provides courts, it is in the mark owner’s best interest to file early.

Over threatening rights can result in the filing of a declaratory judgment action and establishes a specific date by which the trademark owner became aware of the unauthorized use. It is usually best not to threaten trademark rights unless the owner is prepared to take immediate action.

Don’t Delay and Don’t Over-Threaten

Recover Domain Names fromInfringers and Cybersquatters

ACPA

Register Domain NamesContaining Trademarks

Recovering a domain name from an infringer or cybersquatter can be an expensive and timely ordeal. Recovering a domain name may require a showing of bad faith and the current domain name holder having no legitimate rights in the mark.

A trademark owner of the same mark for different goods/services may prevail if he registered the domain name first. It is almost always cheaper to register key domain names on the front end.

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ASPIRIN ESCALATOR THERMOS

Proactively Police Brands Online

Trademark Marking Compliance/Website Audits

While registration of a mark gives others constructive notice of the registrant’s claim of ownership, failure to display the mark with the words “Registered in the U.S. Patent and Trademark Office”, “Reg. U.S. Pat. & Tm. Off.,” or the ® symbol may limit the award of damages unless the infringer had actual notice.

Conduct regular website audits to ensure all trademarks and service marks, registered or unregistered, are properly marked.

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Seek Registration

HOW TOPROTECT BRANDSHOW TO

PROTECT BRANDSFROM KNOCK OFFS& INFRINGEMENT