Seattle Trademark Lawyer

Being locked in isn’t anyone’s first choice, but it does offer one nice advantage: a great excuse to plow through Netflix’s catalog of movies.

I recently watched “Sour Grapes,” a 2016 documentary about a counterfeiter of high-end wine. It covered one man’s operation, from sourcing empty bottles to old corks to distressed paper for faking labels. These wines sold for thousands of dollars a bottle — a long ways from the cut-rate shoes, jerseys, and watches that you might see on the street. However, the operation squarely fits within the same definition of counterfeiting: putting someone else’s brand on a good that the trademark owner didn’t make or approve.

Counterfeiting is a multi-billion dollar problem — not only for the impacted trademark owners, but also for consumers. If that wine with the Château Lafleur label didn’t really come from Château Lafleur, then where the heck did it come from? Maybe the wine inside that bottle is a less-expensive wine made by someone else. Maybe it’s poison, like the kind that killed 70 drinkers in Mexico. Who knows? 

That’s the whole point of trademarks. You know what you’re getting. You see a name or logo, and you instantly recognize the reputation of the seller. Château Lafleur? Great wine. Boone’s Farm? Probably less so. But the economic magic that trademarks provide is ruined when consumers don’t know what’s real and what’s fake. Yes, it’s pretty bad when that jersey you bought didn’t actually come from your team. But think about how bad it is when you don’t know what you’re putting in your body.

Sometimes clients ask if they can get a trademark infringer thrown in jail.

Wouldn’t that be awesome?

However, jail is not usually one of the things a trademark lawyer can deliver. Trademark infringement is mainly a civil wrong, meaning that a trademark owner is limited to civil remedies like an injunction, damages, the profits the infringer wrongly obtained through its infringement, and, sometimes, attorney’s fees.

Trademark statutes also provide that some egregious forms of trademark infringement, like counterfeiting, also constitute criminal acts. However, whether to prosecute such offenses is up to the prosecutor. It’s not up to the aggrieved trademark owner, and it’s not included as part of a civil lawsuit.

Sadly, prosecutions are rare. Unsurprisingly, resources are thin, and prosecutors usually have bigger fish to fry (such as prosecuting murderers and bank robbers).

To increase the chances a prosecutor will exercise her discretion and file criminal charges, I’d suggest making her job as easy as possible. Do your own investigation, collect all of the evidence needed to prove the case, and deliver it to the prosecutor wrapped in a bow. Even then, the chances of getting the offending counterfeiter thrown in jail are pretty slim.

That’s not to say that trademark owners should despair. Though jail isn’t likely, they can still maximize civil remedies to stop the infringement and put themselves in the position they would have been in had the infringement never occurred. That’s usually where trademark owners should devote their resources.

There’s a little-known way to maximize the value of a federal trademark registration — recording it with U.S. Customs and Border Protection.

Taking this extra step (and paying the $190 fee required to do so) puts your trademark on Customs’ radar screen. It helps put the government to work for you stopping counterfeit goods bearing your trademark at the border.

Besides alerting Customs about its mark, the owner of a federal trademark registration can provide additional information to help stop counterfeit goods from entering the States, such as the place authentic goods are manufactured; the authorized port of entry into the States; and what authentic goods look like. When Customs inspects goods bearing the registrant’s trademark that do not match this criteria, it will seize the goods and contact the trademark owner to determine whether the goods are real or fake.

Customs only inspects small percentage of goods that are imported into the States. To be sure, plenty of counterfeit goods make it through. But why not make it tougher on the counterfeiters? By working with Customs, you can leverage the value of your trademark registration and help the government help you.

This really is a story about trademarks.

The State of New Jersey recently fined a bunch of bars for selling name-brand drinks but delivering generic booze instead.

Patrons ordered top-shelf drinks — specifying Maker’s Mark bourbon, for example. The bars charged top-shelf prices, but didn’t give their customers what they paid for, pocketing inflated profits in the process.

This really is a case of fraud. (It’s not relevant to the point, but I can’t help but reveal that many of the bars were T.G.I Friday’s. It sounds like it was an institutional practice — the chain agreed to pay a $500k fine and adopt a “Guest Satisfaction Assurance Plan” that apparently is intended to make sure patrons actually get what they pay for. Why a corporate “Plan” is needed to ensure that bartenders pour what customers order remains a mystery.)

This is an outrage. However, it also illustrates how trademarks work. If I want my martini made with BRAND X vodka, that’s what I tell my server. I expect to pay more than if I ordered a martini without specifying the liquor. But I most definitely also expect to have my order faithfully fulfilled.

Trademark infringement occurs when a later user selects a trademark that is likely to cause confusion with an earlier adopter in connection with similar goods or services. The consumer thinks he or she is buying from SOURCE A, but actually buys from SOURCE B. The consumer doesn’t get what he or she pays for, and SOURCE B gets a sale that was meant for SOURCE A. Nobody wins, except for SOURCE B.

What these bars are doing is even more insidious. They’re not tricking customers with an off-brand name that looks or sounds like a better-known, trusted brand. They’re pretending to deliver what was ordered and pass off one distiller’s liquor for another. The deceived consumer pays more and gets less.

It’s a breach of contract and breach of the public trust.

It also shows how vulnerable consumers can be when sellers fake trademarks.

The New York Times ran a disturbing story on Thursday: “Counterfeit Food More Widespread Than Suspected.”

That’s right. Counterfeit food.

The article talked about how a Russian gang faked vodka. It put booze in “genuine vodka bottles with near-perfect counterfeit labels and duty stamps,” which they sold in stores in England. The main difference between the gang’s vodka and the genuine article it copied?

The counterfeit vodka contained bleach to lighten its color, along with high levels of methanol, which can cause blindness.

The article said at least 20 people died last year from drinking counterfeit liquor.

It adds that counterfeiters employ a “huge array” of deceptions. “Simple ones involve presenting cheap products as branded or top-quality ones, like selling catfish as sea bream, labeling farmed salmon as wild or marketing battery-produced eggs as organic or free range.”

“In other cases, cheaper ingredients are added to genuine products to increase profit margins. Sometimes vegetable oil goes into chocolate bars, or pomegranate juice, wine, coffee, honey or olive oil is adulterated with water, sweeteners or cheaper substitutes.”

All this is scary. It also illustrates how much consumers depend on brands. If you see a mark you trust, you’re comfortable putting that food on the table.

I’ve said it before: counterfeiting isn’t all about fake hand bags. Fortunately, it isn’t an epidemic in our country. But sometimes consumers become casualties in the struggle between brand owners and criminals.