A new and increasingly sophisticated form of counterfeiting is challenging traditional brand protection strategies. Counterfeiters are now avoiding the use of well-known house marks and instead applying “private label” marks to infringing products. This tactic allows them to bypass automated takedown systems on platforms like Amazon, which often rely on direct trademark matches to identify counterfeit listings.
The Problem:
Rather than copying a brand’s registered trademark, counterfeiters are producing lookalike products under obscure or newly created private labels. These products mimic the design, packaging and overall trade dress of genuine goods but avoid using the brand’s registered trademarks. As a result, enforcement tools such as Amazon’s Brand Registry and Project Zero—which depend heavily on trademark registration—may fail to be effective to target and remove these listings. Takedown requests are typically a much less expensive way to immediately prevent an infringer from using a party’s trademark than commencing full-blown litigation.
Why This Matters:
These counterfeits undermine consumer trust and erode brand equity and goodwill while making it harder for rights holders to take swift action outside of the court system. In some cases, counterfeiters even obtain questionable trademark registrations for their private labels and use them to file false infringement notices against legitimate sellers.
It is no longer sufficient for brand owners to merely rely on traditional trademark registrations to combat counterfeits. Brand owners need to adapt and adopt a comprehensive, 360-degree approach leveraging nontraditional protections.
1. Register Trade Dress: Trade dress refers to the visual appearance of a product or its packaging that signifies its source. This can include shape, color combinations, textures and even store layouts. Registering trade dress with the USPTO provides a powerful enforcement tool under the Lanham Act, even when counterfeiters avoid using your brand name.
2. Leverage Copyright Protection for Packaging: Copyright protection can apply to original artistic or creative elements of product packaging, such as graphics, typography, artistic labels and layout. Copyright does not protect functional or utilitarian aspects of packaging but can be a valuable form of protection for visual elements that are artistic in nature. This can be particularly effective in online enforcement, where platforms may respond more readily to copyright takedown requests than trademark claims. Additionally, copyright law provides for statutory damages and attorneys’ fees for infringement of a registered work. The mere act of copying or publicly displaying a copyrighted work can result in liability and provide a copyright registrant with robust remedies.
3. Design Patents: Protecting Ornamental Features
Design patents protect the ornamental design of a functional item for a limited time (typically 15 years in the U.S.). If your product packaging has a unique shape or surface design, a design patent can prevent others from copying it—even if they don’t use your brand name.
4. Use Anti-Counterfeit Packaging Features: Consider incorporating features like holograms, RFID tags or serialized QR codes into your packaging. These not only help consumers identify genuine products but also support enforcement efforts by providing clear evidence of authenticity.
5. Monitor and Enforce Proactively: Regularly monitor online marketplaces for infringing listings that mimic your product’s appearance. Use image recognition tools and AI-powered platforms to detect visual similarities even when your brand name is not used.
As counterfeiters evolve their tactics, so must brand owners. By registering trade dress and packaging copyrights, and by implementing proactive monitoring and anti-counterfeit technologies, companies can strengthen their enforcement capabilities and better protect their brand reputation in the digital marketplace.
