September 24, 2007

“Combating Counterfeiting of Patents and Trademarks,” Currents Magazine, Fall 2007

By Monte L. Falcoff, Principal

You have laboriously conducted research over many months, suffering failures and successes until you finally perfect your new invention — the WonderSpartan™.

Next, your patent attorney prepares a patent application and files it with the U.S. Patent and Trademark Office.  After years of negotiations with the patent examiner, your patent finally issues.  Your patent attorney has also filed a trademark application, which has been granted by the Patent and Trademark Office. Accordingly, you now proudly advertise your product with its appropriate trademark registration symbol and mark the product with its patent number.

After many years of fighting with the bank for funding, and difficulties in obtaining initial customer interest, you are finally seeing significant sales in the marketplace.  You turned a profit a few years ago and your product has become a smashing success.

But then you start seeing occasional eBay® auctions for your products — at a significantly lower price than what your retailers normally charge.  Then you begin to receive calls from customers who complain about the poor quality of the WonderSpartan® products they bought; after they return the products for a replacement your inspection reveals that these are not from your factory, but cheap imitations.  Now you begin seeing Internet Web sites advertising copycat WonderSpartan® products, hundreds of eBay® auctions for these products, and retail stores selling these cheap imitations.  Upon further investigation, you learn that some of these competing discounted products are being shipped into the United States from overseas and some higher quality imitations are now showing up.

Welcome to the bold new world of counterfeiting.  Copying may be the sincerest form of flattery but the now-evil saying wasn’t supposed to pertain to your hard-earned business — and especially not your dear invention.  While caveat emptor, buyer beware, may give some measure of justice to those who purchase the poor quality and significantly discounted imports, the more recent higher quality knock-offs are of even greater concern.  These dark alley competitors are unfairly ignoring your patent and intentionally using your trademark without your permission. What do you do now?

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