Five Tips for Brand Owners to Guard against Scams and Counterfeit Goods during COVID-19 PandemicMarch 24, 2020 – Legal Alerts
The rise of COVID-19 has led to an unfortunate rise in counterfeit products and infringements, as scammers try to profit off the plight of others and the good names of trademark owners. Counterfeit test kits, face masks, hand sanitizer, and pharmaceuticals are the main targets of scammers as the pandemic grows. Authorities, including the CDC, are warning brand owners and consumers to pay attention, particularly when ordering products online, as counterfeit goods can not only damage the reputation of a brand, they can also harm consumers with lower quality components and manufacturing standards.
Brand owners should expect scams to continue and expand over the coming months, but they do have options to protect themselves and consumers. We’ve laid out five action items to help brand owners protect themselves and their consumers.
- Monitor Online Platforms.
The first step to combatting counterfeits and infringements is to find them. If you already have an existing monitoring program in place, either internally or through a third party, review the parameters to ensure it is catching all unauthorized sales.
If you have never established a monitoring program, there are options in how you can proceed. You can utilize in-house team members to search through listings on platforms like Amazon, eBay, and other online retailers. Alternatively, you can hire brand-protection firms, like MarkMonitor, Yellow, or RiskIQ, that will not only find infringements but will also send cease and desist letters or takedowns when authorized and if the right strategy for the business..
Prior to employing either method, make sure to account for all your approved distributors to avoid cease and desist letters or takedowns being filed against authorized distributors. This is particularly true for any third-party vendors, who will need clear guidelines and parameters to make sure they operate as you desire.
- Consider Test Buys of Products.
Once you identify a potentially infringing or counterfeit product, it may be helpful to actually purchase one of the products to determine its illegitimacy, particularly if not immediately apparent. A test buy can be great evidence in support of a takedown form on a platform or a cease and desist letter. It also can be helpful to obtain contact information for bad actors who have shielded that information online.
Make sure to document the purchase of the product and save all evidence, including packaging, for any potential future action. Brand owners should consider having a third-party investigator, not an attorney, perform the buy as they can provide testimony and protect chain of custody if needed later on. Attorneys should avoid making such purchases as they can then become the witnesses.
- File Takedowns Against Counterfeit or Infringing Listings.
Each online platform will have a takedown procedure whereby brand owners can report counterfeit or infringing listings and have them removed. Done internally, through a third-party vendor, or by a law firm, a takedown is an effective and fast tool to combat counterfeit or infringing listings. Each platform has its own rules, and it may be more difficult if brand owners do not have a trademark registration for the mark at issue.
Other helpful tools include Amazon’s Brand Registry Program, which requires registered marks, and Amazon’s Transparency Program, which helps to track individual products). Google also allows brand owners to file advertising takedowns to remove infringing ads.
- Utilize Cease and Desist Letters.
When the takedown form is not successful, the infringer appears to be a repeat offender, or the nature of the listing requires more aggressive action, the next best step may be sending a cease and desist letter from an attorney or authorized third-party vendor. A tailored cease and desist letter with the right tone a great tool to shut down an unauthorized sale completely. Cease and desist letters can be ignored and/or the infringer can simply pop up elsewhere under different identification. In those events, brand owners should explore other strategies to shut down the counterfeits and infringing products. If contact information is hard to find, the test-buy recommendation is a great way to find direct contact information for the entity.
- Notify Your Customers.
Educate your consumers to know what to look out for and how to know if a product is legitimate. Quick and effective communication can not only stop scams but also build brand loyalty.
No matter what avenues you choose to take, make sure to document your efforts and look out for repeat offenders who may warrant litigation. You may also want to consider filing trademark applications for any brands impacted by scams. If you have any questions or want to discuss any of these strategies further, the Dinsmore IP team is here to help.