How to Deal with a Counterfeit Product or Claim

What is the difference between counterfeiting and trademark infringing?

Is it fake? Whether or not a product is a counterfeit boils down to the degree of similarity. Are you dealing with a fraudulent imitation? If so, it might be a counterfeit. The difference between trademark infringement and counterfeiting is a matter of the extent of copying. Counterfeits are identical or virtually identical to the genuine article. Infringing goods might cause confusion, but do not necessarily bear an identical resemblance.

How can you use IP to block counterfeits?

You can acquire certain IP rights to block the sale of counterfeit goods. Register your trademarks to block the sale of competing goods that use a similar name or logo. You can then record your registered trademark with US Customs to block the import of infringing goods bearing similar marks.

File design patents to protect the appearance of the product. While design patents do not protect the function of your product, this valuable IP right may still be obtained to protect the looks of a functional product.

Copyright registration may be an option for certain creative works that contain sufficient originality.

How do you respond to a counterfeit claim?

Some IP owners may be overly aggressive in accusing competitive products of being counterfeits. If you believe your product is not a knockoff, what are options in responding to a false claim of counterfeiting?

If the issue relates to the similarity of brands, it would be extremely helpful to obtain a trademark registration for your name or logo. It would be difficult to accuse a particular trademark of being a counterfeit when it is actually registered.

If the similarity in the product appearance is the issue, obtaining your own design patent would go a long way to defending against a counterfeit claim.

But, what if you don’t own any patents and it’s too late to file a patent application? One possible defense is to explore any prior art literature or products that existed prior to the filing date of the patent you’re accused of infringing.

Another option may be to argue that the accused similarities relate to non-protectable features. For example, do the similar features in your product serve a functional purpose that should not be covered in a design patent? Does the trademark cover a descriptive or generic term that should be available for all competitors to use in relation to certain products?

Need to deal with a counterfeit product or claim?

Contact US trademark and patent attorney Vic Lin by email at or call (949) 223-9623 to see how we can develop and execute a strategy to block counterfeits or defend against a counterfeit claim.

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