Sign Arizona Trademark Assignment Agreement Online

Document type sign trademark assignment agreement arizona online

thank you for joining us today for our fish and richardson webinar my name is cindy walden and today my colleagues kristen mccallion vivian chang and john mccormick will be presenting with me the defeating trademark counterfeiting in the covid19 era our biographies the presentation and the new york new jersey blank cle form are available for download on your control panel please note that you must be logged into the webinar on your device in order to receive cle credits you will not receive credit for listening to the audio portion only today's webinar one will run for one hour and includes a question and answer period at the end of the program you may ask questions at any time throughout the program and the q a area of your control panel and we'll do our best to answer them at the end of the presentation time permitting please also feel free to contact us personally after the webinar before we get started i should remind you that the content of this presentation is for educational purposes only and does not necessarily reflect the opinions of fish and richardson and is also not intended to address every court or case situation so just a brief introduction the important role of trademarks in communicating source and quality has certainly come into heightened focus over the past year in this crazy cove and 19 area the era that we're living in more than ever consumers are doing everything online often exclusively online and not even going to stores in person anymore and companies are expanding and modifying their products to adopt to new needs including things like face masks and hand sanitizer and even online services that were previously provided in person and no surprise counterfeiters and pirates are keeping a pace and taking advantage of the unique opportunities to divert business through trading on the valuable goodwill of brand owners the dangers to consumers from counterfeit goods are very real certainly when it comes to ppe and other products that are being counterfeited so we're here to talk to you today about certain things that brand owners should be thinking about and doing to help best protect themselves during this current time and we are going to start with next slide please a brief primer on sort of basics of trademark and registration and some tips about both the importance of registering them and things to keep in mind on um on that front um then we'll talk about an overview of how counterfeiters are misusing trademarks to capitalize on the current crisis we'll take a closer look at some pandemic related domain name infringement and resolution matters under the edrp next we'll look at an overview of the federal standard for emergency injunctive relief we'll do a review of some recent interesting federal cases and conclude with some tips for protecting your brand next slide please so at this point i'll hand over the floor to john mccormick who will talk to us about what is a trademark i'm going to take this one it's kristin thanks cindy hi everybody uh my name is kristen mckellen you can't see us and we can't see you so this is a little weird but i'm gonna get us started today um as cindy mentioned just on a quick primer on trademarks we're going to ease into this presentation and we could go to the next slide please um essentially we're going to do this in a few minutes uh really just get the basics on trademarks what their purpose and value is the different types of trademarks and their varying degrees of strength and how marks are generally acquired um as i'm sure many of you know a trademark identifies the source of a good or service right when you see a big mac you know it came from mcdonald's when you see a whopper you know it came from burger king um the name of the source doesn't really need to be known to the consumer rather the value is that the consumer identifies that product and the name it's sold under um as coming from someone coming from a source um so for example i like crest toothpaste you know i sometimes forget that it comes from procter and gamble but that's okay doesn't really matter because i know i trust the value of that crest brand i know i like that taste of crust if you can like the taste of toothpaste and i have faith that i'm getting the same thing every time i buy it because it's coming from one manufacturer so that's what trademarks are all about that's the importance of them many many things can serve as trademarks and on your slide here we've given you a just a brief chart you can see the variety of things that can function as a trademark colors product designs packages names taglines and slogans logos shapes even ascent can function as a trademark we can go to the next slide please sometimes some trademarks are stronger than others we typically classify trademarks along a spectrum of strength and that's what you're seeing on this slide the strongest type of mark is typically what we call a fanciful trademark that is something that's coined it's made up it's not a word that existed in our language before you can see the example there this is a pretty famous example haagen-dazs is something that's fanciful it was entirely new when it was adopted as a trademark for ice cream other famous examples of fanciful or coined trademarks exxon in the big one rolex pepsi even verizon um descriptive marks which are towards the left hand side of that spectrum are typically the weakest not always but at least right out of the gate these are terms that describe a feature a function or characteristic of the product or service with which they're used um bed and breakfast you obviously know what you're getting when you see the word bed and breakfast you're getting the ability to you know sign up on some sort of register that involves bed and breakfast descriptive trademarks cannot be projected right out of the gate rather they need to be used exclusively and continuously so that they acquire distinctiveness and once they acquire distinctiveness they become protectable they can be registered on the principal register and they can be enforced but use is really key to any type of trademark descriptive trademarks in particular you want to have a lot of use of them so that you can argue after a few years um typically that they've acquired distinctiveness and now they function as a mark and that leads me to our next slide and go to the next slide please where we talk about acquiring trademark rights and that's through use at least in the us the general standard is use of the mark here is how one acquires writes here even fanciful marks that strongest mark i talked about a minute ago the strongest mark right even though strong marks need to be used right out of the gate and they need to actually be using commerce in order for the user to claim ownership of that mark and get it registered here in the us so it doesn't matter if you've got a descriptive mark or a fanciful mark you want to use it you want to use it continuously you want to use it exclusively to your best ability and that's how you will acquire for yourself a really really strong mark with strong registration rights as i said before you need to use a mark here in the u.s in order to register it but there are some exceptions to that one exception is a foreign trademark owner can actually obtain a us registration here in the uspto without proving use to get that registration um it's a little bit different uh the u.s from the rest of the world quite honestly while we require use here in other countries use is not required and so lots of times parties can get registrations outside of the us for marks that they don't actually use um foreign-based trademark owners in their you know country of domicile can get registrations for marks that they actually do not use in their local marketplace many countries follow first to file rules and that's first in time first and right right you get your registration and just by having that registration you can claim ownership of the mark and you can enforce it even though you don't have use of that mark and now i'm going to hand it over to my colleague jp excellent thank you kristen uh next slide uh carrying on with the 101 concepts we're going to run through some of the fundamental principles that we always consider when we talk about the trademark process and kind of the trademark life cycle from running from everything from kind of selection adoption to registration and enforcement and how the specific considerations might evolve or be different during these uh coven and counterfeiting times that we're in um so in general when we're talking about the purpose of trademark law it serves two basic functions the first is to protect consumers and then the second is to protect trademark owners for consumers it's present preventing consumer confusion fraud and passing off and lowering consumer search costs for searching um by brands by trademark as a recognized indicator of quality um and preference and so by that it's when kristen says that she likes crest she knows what she's looking for and goes right to the product that she knows just by that brand and for trademark owners it's giving them control over their goodwill reputation so that others can't come in and take advantage of the rights or reputation that a company is developed in that specific source identifier regardless of what that is when properly done when properly selected and protected it's an incredible tool to keep competitors and bad faith actors from taking advantage of both trademark owners and consumers next slide please so we talk about developing trademark rights there's five primary steps that we can kind of group everything into um we're gonna keep coming back to these five concepts and kristin's already laid the groundwork for it but certainly comes into play as we deal with counterfeiting uh and knockoff products the first is choosing a strong trademark and we're talking strength we're talking conceptual strength and that is either you know moving away from a mark that is not generic or descriptive and is something that is not widely used in the marketplace and easily separates yourself from your competitors once you've chosen the strong mark it's concerned confirming that the mark's available for both use and registration uh in the context of enforcing and preventing counterfeits registration is particularly important which is why we want to register the trademark in all appropriate jurisdictions once you've adopted that brand you've registered that brands then you have to take the next steps of monitoring for potential abuses and then not just monitoring for it but then taking the next steps to protect your brand so enforcing rights in it uh next slide please so when we consider the strength of the mark and the registrability and availability of the mark we're looking at a range of factors um the question that you might have as a business is you're gonna need to consider are you introducing a new mark is the mark inherently registerable is the mark already registered are you expanding the scope of the existing brand to include new or unrelated goods or services these are all key questions as you roll out and as you develop an appropriate strategy for the brand so if you're introducing a new mark is it a mark that's conceptually strong is it something that is not descriptive or generic and it's something that you'll be able to develop an appropriate brand around uh is the mark something that you is made up of unique terms in the marketplace that aren't being used by your competitors and that you build a wide brand around build a wide wall against uh infringing uses if it's a new mark is it something that can be registered uh is it going to be something that you're going to be want you know what's your timeline for launching the brands uh and how are you going to go about doing that in what countries um as we deal with everything that's kind of related to quarantine and covid you might be in a situation where you have existing brands that you're looking to use in new fields and that might be you have a product that you've long used it in connection with alcohol you're looking to move into the hand sanitizer space or you've done something where it's unrelated medical devices and you want to use it with face mask and you're seeing a need where you think that you might have a brand an existing brand that you want to apply it to a different space well even if you already have an existing brand you know just because that brand exists in connection with other goods it doesn't automatically mean that you can use it with something else entirely you know there's a greater likelihood you can do it if you're taking an existing product and choose you know repurposing the field of use or operation it gets more complicated if you're moving an existing brand instance into an entirely new category of goods or services so even if you've used the product for years you still need to revisit the availability search and checking to make sure that the market is available for use it's not descriptive or generic in this category and that there's not a third party that's already in that space um you know it's it's for certain goods as you might move into certain spaces we're seeing you know historic filings in connection with certain goods that last year the years before you just never would have it and 2020 alone we've already had six thousand over six thousand applications that reference face mask we have three thousand or over three thousand applications that cover hand sanitizer and so everyone's a lot of people are moving into the space while trademark applications continue to see year over year increase in just number of filers um so it's it's you just have to take a step back and look at your brand say is the mark available even if i haven't used it before even if i have used it before is it in connection with a new offering you have to revisit the availability of the mark you can't just assume that you have those pre-existing rights uh next slide please so once you've confirmed that the mark's available for use and registration um you want to take the step of registering the mark it almost always makes sense to do so especially if it's something that you've gone through those steps of clearing it beforehand so you've done the searching and you've confirmed that no competitors have any priority over your user registration the mark the number of benefits are you know it's the number of benefits are huge but also when we're considering the application of defending rights from in the counterfeiting and knockoff space so some of the basic rights is i guess it permits you to use the registered symbol it gives you presumptive nationwide ownership um which is distinguishable from common law rights which can be geographically limited and provides notice of ownership uh in many countries it forms the basis of foreign registration and it helps you license your product securely your goods or services securely uh both in the us again internationally as well next slide please so while you have those benefits in general it also plays a special role in combating counterfeiting most online brand registries require registration in order for you to prevent others from uh selling counterfeit products or inappropriately using your trademarks uh in almost every case for domain name disputes it is gonna be a crucial element to stopping or addressing those in that infringement you know when you have common law rights you can still challenge these issues but it's much much harder to do in terms of combating counterfeiting that's coming in or counterfeit products that are coming in from other countries it's something that can be recorded with customs and border patrol and you know you can take that relationship one step further too and especially if you have a product and brand that's being regularly knocked off and you can actually work with customs agents to do trainings to identify counterfeit products and work with them to train them up on what they're looking for uh and in many countries you need a registration in order to either sue someone or obtain damages or infringement uh next slide please so gone through the step process of selecting and adapting a mark uh or you clear the mark that that's been previously used for other goods and services you've registered and now you have to take this step further you need to sign up for the watch programs which is monitoring third party applications domain names social media accounts sign up for those online brand registries take the step of reporting your rights with customs when you file trademark applications or consider where to file trademark application specifications don't just look at where your you know where your home office is based you know consider where you're either making the product or where you see yourselves going in five years or where these counterfeit products might be coming in from that you want to have the steps actually or a foothold to be able to get in there and stop the use um it's good to educate your customers and competitors online you know that can be as simple as educating them about what your rights are or it's going further and warning them of potential scans that you're experiencing and then also you know look to your industry to see what support system you might have to help you get through these issues um a lot of industries have specific teams and organizations set up that provide resources and trainings to help combat counterfeiting next slide excellent i'm going to send it back over to cindy walden excellent thank you so now we're going to talk about where and how counterfeiters are operating next slide please which is virtually everywhere next slide please so um so there are some novel categories no pun intended um that have developed during this covet era you know certainly products um like face masks and test kits and vaccines and hand sanitizer and other medical devices or new new or um in heightened release categories where counterfeiters are certainly making their mark there's also price gouging which is a new aspect of the current climate where consumers are really looking for genuine products and willing to pay more for them and it's taken to an extreme and then of course the traditional categories that we have always seen for counterfeiting for you know identical goods and services we've seen filings in other countries in connection with the same goods and services and in an effort to try to pirate or hijack a mark phishing attacks certainly take um on a an important role in this current climate and continue to be an issue job scams domain names and social media these are all areas where counterfeiters are as engaged than ever and taking advantage of the valuable goodwill of brand owners so next slide please so um a recent uh press release from customs and border patrol i thought was interesting and highlighted some of the facts about the efforts that they have been up to in terms of seizing products and there was a press release in late november that talked about seizing 13.5 million counterfeit face masks over the past year and 177 000 unapproved test kits amongst other types of um ppe and medical products um just this past year um and in addition as i said the counterfeiting of uh products that has always gone on has continued in this past year customs and border patrol has seized over 26 000 shipments of goods violating intellectual property rates with a market value of 1.3 billion dollars so i know this is well familiar to all of you on the line but that is big big business and big losses to um you know to the brand owners whose sales are being diverted so there's just some examples here of different customs and border patrol officers in different ports and the types of things and the size of the shipments for your for your reference next slide please um okay so we thought we'd talk a little bit about domain name infringement and some of the interesting examples that we've seen of that in this common era next slide please so for those of you that aren't familiar um one uh way of addressing domain name issues the most effective way really if you are having an uncooperative party on the other side is to institute a udrp proceeding and the uniformed domain name dispute resolution policy is a is a procedure that's set in place to allow brand owners to resolve abusive domain name registrations through a particular forum and with particular rules about how that works and the remedy through a udrp proceeding is cancellation of the domain name or transfer to the brand owner of the domain name um so these are beneficial because they are quick and particularly when the respondent fails to sort of participate or respond which you'll see in a minute we have some examples of that um so it can be a really effective tool a tool to use for brand owners particularly if the domain name at issue is one that's really um problematic and you're not getting any relief by trying to reach out with cease and desist letters or other means next slide please so just quickly the udrp standard there are three standards three standard elements that you need to have in the udrp complaint the first is that the respondent has registered a domain name that has an identical or confusingly similar trademark embedded in it to a mark that um that the brand owner has rights in the second element is that the respondent has no rights or legitimate interest in in that domain name and then the third element that needs to be um proven is the domain name was registered and it's being used in bad face and that can be established in a variety of ways next slide please so we have a few examples of some of the interesting udrp cases that have happened over this past year that touch on covet related issues and domain names um and certainly as uh is no surprise the you know bad actors are really targeting the trademarks of companies that um his marks have goodwill in the marketplace and are in higher demand during this pandemic in particular um some of the obvious categories of pharmaceuticals and cleaning supplies and things like that so the first example we have listed here was a registration for the domain name kalitrakovid19.com which is confusingly similar to these caletria mark for pharmaceutical products that was being evaluated for the treatment of covid and so the website that came up at that url was offering the sale of a counterfeit product that looked exactly like um that product so that udrp was filed april 2nd it was actually decided april 29 and you'll see a trend on a lot of these i mean it was decided very quickly the respondent no surprise didn't participate so that i'm shortened the time frame a little bit but that's one example the next one here is medline mask and again that domain name incorporated uh the medline mark medline is one of the oldest healthcare product providers in the u.s and in the decision that was rendered in that case again the arbitrator who wrote the decision referenced the opportunistic registration of that mark in this climate as uh proving the element of bad faith um again that one was decided in um a little bit less than a month actually next slide please so then we have the purell hyphen sanitizer.com which was not registered by gojo industries um and uh presumably well is now owned by them because they prevailed in this uvrp proceeding again this is one that took just about a month for them to wrestle that mark away from the person who had registered it for them and again it was the um you know probably goes without saying the obvious intent to trade on that mark and in this market another example here uh an entity tried to register or did register corona gileadsciences.com and it was found to be confusingly similar to gilead's gilead and gilead science marks and in the decision the arbitrator talked about the um the use of the term corona obviously being an attempt to to reference the risk of confusion that they're looking to create here with gilead in this current environment they also noted the timing of the registration of the domain name you know coincided pretty much directly with the news and reports about the vaccines that they were developing the antiviral drug so anyway that was another that was a success that was relatively quickly achieved as well next slide please then there are some in addition to sort of the uh face mask pharmaceutical there are some less obvious targets but still ones that were right for um counterfeiters to try to take advantage of uh during this era so one of these examples is princesscovidhyphen19.com was a domain name registered in connection with this phishing scheme um and it was used uh in connection with an email campaign reportedly from the president of the company seeking personal information um in a phishing scheme and that was a udrp that was successful in relatively short order the next one interestingly um facebook 19 is um a udrp auction and the in the decision they talked about the strong likelihood that members of the public could perceive it to be um facebook to be the official source of the information and that was particularly troubling given the public risk of misinformation about um 19. so before filing this udrp action facebook council actually sent a cease and desist letter to the registrant in this case and they got a response offering to sell them the um the url for two thousand dollars so that also clearly uh establishes the bad faith elements but uh that one was also resolved in favor of facebook and short order next slide please so a few more examples of less obvious targets one um involved citizens bank there was a citizens bank ppp.com ural that was registered and the use and registration of that mark with the ppa was was clearly kind trying to trigger and divert people looking for actual information um related to the release measures um that one also was resolved in about a month uh next we have chevron pandemic.com and this was a website that was set up to induce third parties to provide sensitive financial information for pandemic assistance again incorporating the chevron trademark and the word pandemic and that one was was also readily resolved lowe's hotel relief.com was another one where they added it was like a type of squatting uh kind of case where they added an s for the um sorry they removed the s and uh but it was close to the lowest hotel url and that rose was using that legitimate url in order to provide need-based disaster relief so um the the language and the decision there that it is particularly lamentable and shameful that respondents should target such a vulnerable segment of the community who require release during the present pandemic is a good example of some of the language you're seeing in some of these decisions next slide okay please so we have just a few more um this hillsongonline.com was a url that was um registered and resolved to a website that offered gambling services and adult content which was particularly troubling to hillsong church who owns the trademark hillsong.com you know in part obviously because they were a church but also because of the people that really were looking you know many for the first time for church services online and the um decision also referenced the um that is uh an additional factor to be um you know to be noted in the bad faith element of the decision the next one is porchella festival.com which was a website resolved to a page that purportedly advertised the fundraising event for relief of coven 19 with the typo in it on that page and then donate now and so clearly trying to portray um the entities that owned the chella and coachella music festival you know marks and divert funds with a fraudulent fundraising activity so that was quickly resolved as well and then a final example was uh the trade domain name registration of return ready by cvshealth.com which was used um to offer the domain name for sale and it's confusingly similar to cvs's cvs marks in the decision they noted that the trademark for return the return ready mark by cvs was filed just three days before this url was registered so i think that's another kind of hallmark of a case where someone's watching who's filing what on the us pto register and quickly registering domain names but that one again was easily resolved so um hopefully that gives you a flavor of some of the interesting and sadly not not going away uh problems that people have with respect to these urls but also perhaps give some hope with the relatively speedy um relief you can get if you use udrp action next slide please all right so now we're going to turn to emergency injunctive relief via litigation thanks cindy hi everybody this is kristin again um as cindy noted we're going to shift gears just a little bit uh we're going to continue to focus on enforcement though obviously it's critical in these types of situations and while udrp actions are great they are a great tool we use them a lot um the resolution is limited because it's really just like disabling a website so what happens when you need to do more than that right when you have uh physical shipments and purchases and distribution of products goods in the market that you need to stop trademark law can come in really handy in these types of situations but sometimes remedies could be limited particularly when the trademark office is trying to when the trademark owner is trying to get a quick result for example through a temporary restraining order a tro or preliminary injunction um these cases are these types of motions seeking this type of quick relief i mean they they happen a lot um the problem is that they're not always granted um and here on your slide we're looking at slide 28 this is the four factor test that any plaintiff would have to meet in order to obtain a tro or a pi in a nutshell plaintiff must show four things um those are one through one through four up on your screen courts weigh these factors and decide i simply stated um i think though the large difficulty here is that and and the reason why this type of equitable remedies are not granted right out of the gate is because the plaintiff essentially has to tell the court is to convince the court that it's going to win ultimately on the merits right that's hard to do um there's limited discovery if there's any discovery at all and these other factors play into the defendant's favor sometimes um the balance of the hardships do the you know what party does that tip in if the pi is granted or if it's not um the public interest does the public interest be served by a pi or not a lot of times the court says no you know that factor is neutral or it doesn't doesn't lean towards the plaintiff and so we're going to deny the pi um what happens a lot as well is the court says well you can be made whole later plaintiff trademark owner because you'll get money damages if you win and that should be a sufficient revenue for you so this is what happens in these types of cases a lot of times factor four that public interest factor it's really hard to meet we can go to the next slide similar situation with some state claims so pi and pis and tros are typically hard because the test is hard to meet um a variety of state claims face similar difficulties we just have one example here i'm in new york i work in our new york office we litigate a lot in new york courts um and we see a lot of trademark plaintiffs frequently allege a cause of action under a state law it's a new york general business law section 349 there are numerous gbl sections that are easily pled and typically apply in trademark cases but this one crops up a lot and it's not exactly on point um it crops up a lot because the law forbids deceptive trade practices and that's so easy for a trademark owner to say someone's using my mark consumers are confused they're getting deceived right of course you would think that 349 applies but it actually doesn't um it actually applies and is really limited solely to preventing dangers to public health and safety so that's not your typical trademark claim um and quite frankly you know health and safety of the public doesn't come up a lot in trademark infringement cases we can go to the next slide so now we're going to shift gears a little bit and talk about some federal cases where basically every hurdle i just talked about goes away i guess we can thank kovid for something we can move on to the next slide so let's take a step back recollect unfortunately back to last march and april right and the news was on all the time and what were we seeing news story after news story about how hospitals needed equipment medical personnel needed n95 masks supplies were low it was a critical critical situation um and careful allocation of these safety equipment and other materials it was critical um unfortunately things like a pandemic as cindy was touching upon tend to bring out bad faith actors right they come out of the woodwork it's basically people looking to make a quick buck at the expense and well-being of the public um well now that goes back to that 30-49 claim i was just referencing in new york and the fourth uh trl pi factor which both um look at the benefit to public safety public health if um the claim is you know successful if the pi is granted um so this is exactly what 3m had to deal with when it discovered early on in the pandemic in the u.s that it's n95 masks were being sold by folks asking for astronomical prices you'll see on the slide 4 to 400 to 600 higher than 3m's list prices um awful to be doing that during this pandemic such a critical time that people needed these products um so 3m took action um and this is really as i was saying before where the force the tropi factor really came into play um because it's all about the public interest and will the public interest be served um if is this price gouging because this is exactly what was going on price gouging was stopped um 3m filed cases across the country uh using trademark claims it was trademark infringement trademark dilution claims false advertising false sponsorship unfair competition you name it um there was a lot of trademark claims alleged in each case and they all sought immediate injunctive relief to stop the sales of these astronomically priced masks this wasn't really a counterfeiting issue it was a price gouging issue um and they won we can go to the next slide i'm going to give us talk about for a second one new york example then i'm going to hand the deck over to vivian who's going to close it out but this is one 3m case uh that was filed in new york price gouging so it was to stop price gouging using trademark law it's ingenious 3m was really applauded for using trademark law to kind of kind of stop something that's not typically um a trade comes up in a trademark issue which comes up in a trademark case so this was not a counterfeiting issue per se it was really just to stop these unauthorized dealers from charging and quite honestly getting these crazy huge prices um for medical medical supplies and so the court granted here in new york um a pi to 3m it stopped the sales uh it easily found 3m faces irreparable harm you know easily found that the public's interest would be uh saved satisfied by the granting of a tro um it also recognized that if a brand here 3m is associated with price gouging well that's harmful to the brand right to the end to the brand owner that's not something that any brand owner wants to be associated with so it was really here the combo of a really strong trademark claim combined with a really strong motion for immediate adjunctive relief that got 3m this this quick relief that they were looking for and we can move to the next slide and vivian is going to take it over from here hi everyone this is vivian so our next case example uh medline industries versus office smart is actually quite similar to the 3m case that christian just talked about except that this one involves a markup of medical gowns and you might recall cindy had mentioned medline had one of those successful edrp complaints so here they were targeted by this online office supplies company that was offering to sell medline customers millions of these quote unquote medline gowns at uh 200 to 400 percent more than medline's prices and as you can see on the slide the complaint showed examples of how office mark used the medline mark prominently in its emails to medline's own customers there's the email subject last chance for medline gowns to be ordered and if you recall this is a time when a lot of a lot of hospitals were lacking gowns and masks and then in the bottom here medline also alleged that office smart was sending customers copies of medline's own fda letter which officemart doctored to add in their own letterhead and contact information at the bottom to make it seem more legitimate next slide please so medline saw injunctive relief and damages for a host of trademark claims and also state claim in north carolina and unfair competition and to support their requests for injunctive relief and to show that they were going to be damaged the reputation would be damaged medline attached some examples um one was from one of medline's customers who was asking why is an office supply company offering to sell us medline products and he threatened that if you found out medline was selling product into non-healthcare channels which is really medline's customer base that would be the end of any business relationship interestingly um office smart filed a counter claim for defamation based on that line warning its customers about what office mart was doing but the court dismissed that counterclaim with prejudice because the allegedly defamatory statement was made during the course of the judicial proceeding and was therefore absolutely privileged next slide please our next example is uh from florida and this is a fairly new company called coronacide they manufacture a covid19 antibody test and they're one of a few companies that have received emergency approval from the fda to offer the tests to healthcare providers importantly these tests are not approved yet by the fda for home use but what happened was in february the defendant wellness matrix was looking to purchase some of these test kits from corona side uh cronicide said no because they looked into the defendants and found that they had previously been sued for fraud including by the sec and corona side alleges that after they expressly rejected that offer the defendants then went on to create these websites including stopcorona28.com that were offering fake versions of their test kits and these you know this image on the bottom is just one example of what they were using the the complaint alleges that the defendant's uh websites were pretty much made up of all of coronacide's text and images on their own website and they also altered these images um to make it look like um they were they were real test kits that were approved for home use next slide please so this is an image uh from chronoside's own website as you can see or maybe if you zoom in you can see um it says for emergency use authorization only if you can click on the slide please so this is an image that's from a screenshot from the defendant's website taken back in march because they disabled the website afterwards you can see that they copied the exact image but then they added on a u.s fda number and what that is it's not an approval number it's actually chronicide's application number but then they added the text fda poc approved to make it look like the test was approved for at home use which is how the website was marketing the test a representative of wellness matrix also announced on twitter that that website was rolling out coronavirus at home testing kits and that tweet was also deleted shortly after next slide please so in april corona side sued the defendants b they filed a verified complaint um and they filed the complaint uh based on their common law rights in the quran aside mark because it was fairly new um one interesting tidbit here is that uh corona side actually filed a uspto application to register quranic one day before they filed their complaint and they after they filed the complaint they filed a petition to make special uh their application for the corona side mark and the reason for doing that um is because of this ongoing infringement and the fact that they were seeking preliminary and injunctive relief so this is a rare instance where the pto did actually grant the motion to make special um to expedite the review of the application um and the mark was approved in june and it registered in september so i know this is a fairly um obscure part of the uspto practice but it does show that in these extreme circumstances you know where the infringement does affect the public health that we've been talking about um this is you know one example where a procedure like the petition to make special can can work uh next slide please this is just an example of um you know a lot of these covid test companies that are having to warn their customers about infringement um so while this case is still pending and while the defendants are both under investigation from congress as well as the sec and um also they're subject to other civil suits grown aside has put this warning message on their website next slide please this next case is a little bit different uh because it involves infringement on social media and spreading misinformation about copen 19 so you see here in july this anonymous user created this instagram account um you know promoting so-called hoax 19 parties they're using arizona state university's marks and also their their school colors next slide please in august arizona board of regents they filed a lawsuit against a doe defendant since they didn't know who owned the account for trademark infringement dilution and unfair competition and they also sued facebook for contributory infringement um in the complaint asu alleged that they had reported the infringing account to instagram but instagram responded that you know the reported party appeared to be using the mark to refer to or comment uh on asu's goods and services and so it wouldn't take any action and that was even though asu noted that the spread of misinformation was also in violation of instagram's own policies and community guidelines so asu moved for a tro and a pi to have the account disabled and they also noted in their motion that the other reason why this was such an emergency issue is because students were due to return back to the campus just in a few weeks for the for the fall semester next slide please this is just one example of actual confusion that was included in the plaintiff's complaint it's a public tweet where somebody who appears to be an alum the school believed that asu was actually having these coveted parties and claiming that code was a hoax next slide i think this is our last case example i'm just going to close out the arizona case so within two days of being served facebook permanently disabled the asu covent party's accountant also related one that i believe was set up because of the lawsuit and asu then withdrew the motion for emergency relief and voluntarily dismissed facebook from the case this case is still pending and it's still unknown who that doe defendant actually is but the court has allowed some early discovery through third party subpoenas to ascertain the defendant's identity next slide please all right so this is our last case example and it was filed just two months ago by abbott labs which makes two covid19 diagnostic tests and an antibody test um abbott alleges that after uh the defendant brown was terminated for cause if you registered the domain name abbottdx.com and was using an email at abbottdx.com to masquerade as an avid salesman authorized to sell coven 19 tests in an email that abbott included in its filings the defendant was claiming that he moved into a new position and was working in emergency emerging technologies and that's why he was offering to sell not abbott covent tests but actually third-party tests um and he alleged that it was filling in the gaps in abbott's previously and existing offerings the image here um is a comparison from abbott's filings um that was created to show how the defendant doctored his email signature after he was no longer working at abbott um to dupe the customers next slide please so in abbott's complaint they allege a bunch of the same trademark claims as well as a claim under the anti-cyber squad and consumer protection act which was because of the domain name registration also federal trade secret misappropriation and several state claims that related to the defendant's prior employment um the the complaint alleged that the defendant kept old emails and that's how he was able to actually target abbott's actual customers um abbott also moved for a preliminary injunction and their filings included several examples of of confusion as you can see from these three examples um avid's customers are from these major healthcare institutions and even these typically sophisticated consumers were believing that the defendant was still affiliated with abbott this case and abbott's preliminary injunction motion are still pending just yesterday the court entered a quote unquote temporary preliminary injunction for tobacco lack of a better term actually both parties had agreed to that temporary injunction until the court decides have its motion this is procedurally a bit unusual but it was proposed by the court because the defendant had asked for an extension of time to respond to abbott's motion and the court acknowledged that a provisional remedy was time urgent uh next slide please i think now we're gonna take it back to cindy who's gonna talk about what brand owners should be doing to protect their brand from these bad actors excellent thank you vivian so next slide please so we thought we would wrap up with just some tips um based on some of the instances we talked about and the information provided for protecting your brand um from bad actors really to supplies anytime but certainly now um you know during uh the covid uh challenges that the companies and brand owners are facing um and when the unique issues from uh counterfeiters so as jp mentioned auditing existing brands to ensure that you have trademark protection for your existing goods and services but also supplementing those as necessary to account for brand expansion if you're not going to offer face masks or if you're now going to offer some of your services online due to covert things like that make sure that you are updating your filings as appropriate um and then a related point is just to continue to clear and register any new marks new trademarks or service marks as well as any new uses of trademarks or service marks in order to give you really the most effective tools to protect your marks against infringement and counterfeiting i'll chime in on the next three bullet points we have on this slide consider setting up a trademark application domain or social media watch watches are really really good ways to find and very quickly um when trademark applications are filed by infringers or for infringing marks when domain names are registered as well record your trademark registrations with customs customs can be your friend they can stop and prevent um the importation of infringing counterfeiting goods into this market this is particularly important now given everything we've talked about today the same goes for copyright registrations um registration certificates can be given to customs and they will do the work for you and where possible think about what else you have other than a trademark right um how can you supplement that right copyright comes into mind trade dress rights come into mind patent rights come into mind if you have to enforce you want you want to have a robust list of rights that you can use to enforce some other things that come into play perhaps you've got a breach claim perhaps you can make an unfair comp claim and always think about the state law claims too we can move to the next slide continuing on with that um when you become aware of infringement online or confusion online create a record of it you know preserve that instance of fraud that become aware of if that's a domain use if a customer reaches out with some report of a phishing scheme that attacks your brand reach out create the history and preserve the record related to the watch services monitor domain name registrations uh you know there's watch services for it take action if necessary to protect your brands all right and i'll chime in on the last two tips as we saw from a lot of the case examples that i talked about a lot of these plaintiffs are fil ng detailed and sometimes verified complaints and that's usually very helpful if you're planning to move for immediate injunctive relief usually you would file your motion for preliminary injunction or a tro application either simultaneously with your complaint or you know just a day or a couple days afterwards um so back having a detailed complaint can really consolidate those efforts and it's also very helpful if you think that the defendant might default which has happened in some of these cases where the defendant is clearly a bad actor also including visuals of the infringing use and examples of actual confusion that's also you know very compelling for meeting those those four elements that kristen talked about for injunctive relief a lot of times um you know the plaintiffs are finding out about the infringement through their customers who are duped so you know saving those emails you know getting permission to include those in a complaint is always useful our last tip here is to consider putting out a statement uh warning consumers about any infringers or counterfeit products that you're already aware of as you saw from our examples these sophisticated customers are getting confused you know this is a time where a lot of people are you know there's a high demand for these products a lot of people are looking um you know for alternative sources and it's it is difficult to to be able to tell you know whether something is genuine or not i saw there was a question from uh one of the attendees about any tips for consumers to spot uh counterfeit products uh you know i you know one thing that came to mind was if you go to uh you know the brand's website um there's often like a store locator button or you might actually see something like that warning statement uh that kronocide had put on their website um you know when when they're aware that there are definitely fake versions on the market so there's just one example if anybody else wants to chime in yeah some you know some companies will put out content as to what is difficult for counterfeiters to replicate so it might be there might be some sort of educational materials online about you know look for the hologram on the tag or look for this type of stitching that either you can find on their website or they might have signed into some sort of branding campaign that they've uh launched but it's almost what whatever qualities you can find that the the company puts out or can put out that helps distinguish themselves from their counterfeiters out there and it is tricky because counter many counterfeit products look very legitimate and real and are well polished and well done so unfortunately there's no no easy answer there but there are certain hallmarks i think you get a gut sense about um and some companies do incorporate technology or or messaging on their sites um so um it looks like we are uh at our time thank you so much that is all we have today uh we really appreciate you joining us for this webinar we'll post an on-demand replay soon at our fr.com website if you have any questions regarding cle credit email phishes mcle team at mcle team fr.com and visit fr.com for more information we appreciate your time thank you all and stay healthy take care thanks all