Advertising Law Tool Kit - Tenth Edition | 2022

Venable / 19 To minimize the impact of loss due to counterfeits, knockoffs, or product diversion, companies should consider implementing the following best practices: • Conduct an internal brand protection audit to assess how well key brands and products are secured in terms of intellectual property protection, security measures, supply chain, and distribution through authorized channels. • Register key IP, including trademarks, patents, and copyrights, in countries where the products are sold, or will be sold, and in countries where the products are manufactured or assembled. • Record key registered trademarks and trade dress with U.S. Customs & Border Protection (CBP) and other authorities in the territories where the goods are sold and manufactured/assembled. • Identify any hot spots for counterfeiting issues, and work with local counsel in those territories to take advantage of local tools that may be available to assist with enforcement efforts. • Provide CBP and global customs authorities with information on known or suspected distribution or import of counterfeits of the products or their components. • Regularly provide CBP with updated product identification manuals and arrange for training sessions to educate inspectors on how to distinguish counterfeits from authentic goods. • Routinely monitor unauthorized use of the company’s brands and establish surveillance of distribution channels. • Select and use anti-counterfeiting technology that is appropriate for the product and business model (e.g., radio‑frequency identification tags, holograms, watermarks, covert markings, or inks) and not overly burdensome to use for product authentication. • Educate employees and sales forces about the importance of IP protection to the company’s success. Provide employees and sales forces with training to help them better recognize and respond to counterfeiting issues. • Hire experienced investigators to build enforceable cases against networks that counterfeit or divert the company’s goods. • Police the Internet and online marketplaces for the sale of counterfeit goods. Make full and regular use of the procedures offered by e-commerce sites and online marketplaces to de-list or take down infringing listings or websites. • Work with legal counsel experienced in the handling and management of intellectual property enforcement programs that reduce the impact of counterfeiting, product diversion, piracy, or other infringing activities.