Anti-Counterfeiting

Brinks Hofer Gilson & Lione assists firm clients in identifying, seizing and destroying counterfeit goods. This can also result in disrupting, and eventually disabling, the channels in which counterfeit goods travel. Swift, aggressive action is required, and firm lawyers with extensive federal court litigation experience can orchestrate the many steps needed to bring your company’s counterfeiting problems to a quick, decisive and successful conclusion. From directing the preliminary investigation, gathering and packaging the relevant evidence, making application in federal court for an ex parte seizure order, coordinating seizure raids with law enforcement officials (U.S. Marshals and local police departments), to finally supervising and participating in the raids, Brinks lawyers are with their clients every step of the way.

For example, in February 2004, U.S. Marshals, representatives from Brinks client Swanson Tool Company, and firm attorneys conducted simultaneous raids and seizures in Chicago and Houston. The seizures netted tools bearing counterfeits of Swanson Tool's SPEED trademarks, along with related electronic records. Shortly thereafter, a federal court issued preliminary injunctions confirming the propriety of the raids and seizures. Through documentation obtained during the raids, the firm learned the identity of the importer of the counterfeit tools, which added to the client’s counterfeiting information base.

Also, on behalf of Seven Towns Ltd., owner of the famous RUBIK'S CUBE puzzle cube trademark and trade dress, the firm works directly with U.S. Customs officials to ensure that field agents are aware of new infringing and counterfeit twist-cube puzzle cubes that appear in the marketplace. This proactive approach has resulted in seizure and destruction of thousands of counterfeit products as they enter the country, thereby avoiding the drain in client time and resources that would otherwise be spent after the counterfeit goods enter the stream of U.S. commerce.

Brinks also helps clients position themselves to minimize counterfeiting risks before they ripen into mature crises. These include developing a registration strategy that can qualify for and take advantage of Customs recordals available at each country’s ports to identify and seize counterfeits at the point of entry, and obtaining valuable localized advice through our relationships with local investigators and enforcement authorities.

We also advise firm clients on how the counterfeiting provisions of the Lanham Act can apply to what others may consider ‘traditional’ trademark infringement claims. Our cutting-edge view of the reach of the counterfeiting provisions of the Lanham Act has enormous potential benefit for firm clients. For example, an award of damages or profits for counterfeiting is, with few exceptions, automatically trebled, and attorneys’ fees are likewise automatically awarded.

Regardless of your company’s locations and business, the progressively global expansion of trade leaves everyone at risk of being the victim of counterfeiters, who regularly learn more sophisticated methods to damage your company’s good name and marks. This risk is aggravated by the proliferation of online infringers, who can easily and quickly evaporate, unless an ex parte seizure order and raid directed at the right time and place is executed. The firm’s extensive and long-standing relationships with foreign counsel in virtually every country of the world means that our anti-counterfeiting services do not stop at U.S. borders or with the end of the U.S. business day. Our network of professional relationships is ready to assist clients anywhere and at any time.