Trademarks & Service Marks

Harness Dickey Waged War on Counterfeiters of JOE ROCKET® Brand

Challenge

Randy Robison, President of Robison’s Inc., declared war on counterfeiters stealing his previously owned JOE ROCKET® brand name in an attempt to sell falsely identified leather jackets. Robison’s Inc., the then exclusive source of JOE ROCKET® products, was known globally for their innovative design and production of the finest motorcycle apparel in the world. At the time, Robison stated, “We have invested years of experience developing the JOE ROCKET® brand into the market leader it is today… and there is no way I will allow it to be stolen, misused and outright desecrated like this.”

The surge in Asian and Pakistani counterfeiting started in earnest when e-bay and other on-line auction sites became mainstream. Would-be customers were complaining they received poor quality motorcycle jackets. Upon our client’s review of the returned products, it was apparent that they were poorly made knockoffs.

In response, Harness Dickey’s team devised and executed an aggressive and multi-pronged litigation strategy involving private investigators and U.S. Marshals. Robison declared, “I want our JOE ROCKET® customers and our dealer network to know that we will not allow our brand name to be compromised whatsoever.”

Solution

The Harness Dickey team jumped into action by arranging for multiple private investigator “sting” purchases across the country in order to ascertain the identity of the counterfeiters and their warehouse location. We filed a Motion under seal seeking a Marshal’s seizure along with our filing of a federal lawsuit against the suspected counterfeiters before the U.S. District Court for the Southern District of California. The Court immediately ordered a seizure of the counterfeit jackets and issued a temporary restraining order against the counterfeiters [Robison’s, Inc. v. LoFom, Inc., Than Lee, and Michael D. Wade, Case No. 05-CV-2082 (S.D. Cal.)].

Traced to a San Diego storage facility by our private investigator, a Robison’s Inc. representative, accompanied by 3 U.S. Marshals, a Harness Dickey attorney and a locksmith converged on the clandestine operation from wherein counterfeit items bearing the JOE ROCKET® brand name were discovered and subsequently seized. A few days thereafter, the counterfeiters and Harness Dickey appeared at a hearing before the District Court Judge, who ordered a preliminary injunction against the named defendants and those acting in concert with them. Harness Dickey then obtained a very favorable settlement to resolve including a cessation of the counterfeiters’ further activity.

Harness Dickey subsequently worked diligently with U.S. Customs to impound and destroy counterfeit goods from others at U.S. shipping ports, and set up a regular program to shut down on-line auction sites that attempt to sell the counterfeit goods. Having served as counsel to JOE ROCKET® for decades, Harness Dickey continued to advise the company regarding trademark and patent prosecution and enforcement, until the brand was sold.