Trademark Protection for Goods vs Services

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This article was originally published in the July 2018 issue of XBiz World Magazine on page 36.

In the rapidly-evolving adult industry today, companies that have traditionally offered web services, such as porn or cams, are now crossing over to offer pleasure products as well.  Take a look, for example, at PornHub, which is known for its tube site, and has now launched its own line of sex toys.  The frequency of these kinds of expansions will likely increase as the pleasure products market continues to explode.  Providers of services expanding their brands into the products realm should be aware of the different trademark issues they could face with counterfeiters, as well as the tools available to deal with those issues.

A trademark is a word, symbol, or design used to uniquely identify the source of goods or services and distinguish them from the goods or services of others.  A company may spend countless hours, days, and years building its brand and the reputation behind it.  The company may spend thousands, or even millions, of dollars on marketing efforts to engrain the brand name and associated quality in the minds of consumers.  This investment should be protected with trademark registrations from the U.S. Patent & Trademark Office and/or other government intellectual property offices.

Initially, when crossing over from services to products, it is important to remember that if your company owns trademark registrations already, you should have your attorney review those registrations to determine if additional trademark protection is required.  Under these circumstances, the answer here will probably be “yes,” since the trademark registration would only cover the services you identified in your trademark application as currently being sold at the time.  For example, if you are granted a registration for your trademark as applied to provision of cam site services, you’ll need to apply for another registration covering pleasure products if you later begin to sell sex toys.  This will expand your protection (via a separate registration) in the trademark to cover the new products.

Online services providers usually have to deal with infringement in the form of cybersquatting or typosquatting where a third party purchases a similar domain name from which it offers the same type of service.  This can be fought in a Uniform Domain-Name Dispute Resolution Policy (UDRP) proceeding through ICANN, which is basically an administrative arbitration.  Remedies include removal of the offending website, and transfer of the domain to the complainant.  The infringement can also be fought through a lawsuit in court, where money damages are an additional available remedy.

When there is infringement of a trademark on goods though, the process can be more difficult.  Counterfeiters market and sell fake products resembling and bearing the trademarks of legitimate companies.  This not only hurts a company’s bottom line, but can also harm its reputation when customers unknowingly receive poorly made replicas of the actual product they thought they were purchasing.  Further, this can pose a potential danger to the consumers if the replica is made from unsafe materials or by faulty manufacturing methods.

Counterfeiting is a major issue faced by makers and sellers of adult pleasure products.  In today’s global online market place, it can be difficult to foil counterfeiters.  The goods have to be located, possibly prevented from importation, or in some cases, are already in the hands of the consumer.  There are actions outlined by law that brand owners can take via the powers of the U.S. government.  Of course, if the counterfeiter can be identified and found in the U.S., it can be sued in court.  If the goods are being brought in from overseas, they can be blocked at the border by U.S Customs & Border Protection (CBP).  Trademark owners should register their rights with CBP to take advantage of the agency’s powers to stop importation of infringing goods.

These days, there are also some preventative measures you can take through private companies to deal with counterfeiters in the U.S. and abroad.  A good example is the Amazon Brand Registry.  Forbes has reported that Amazon has become the world’s third-largest retailer.  As you have probably noticed, Amazon now carries sex toys.  It has turned into a major player in the pleasure products space.  It’s no secret, though, that [it has been reported that] there are a lot of counterfeit goods, including pleasure products, being sold via the website.  To assist sellers in dealing with this, Amazon has created the Brand Registry.  This program is designed to help legitimate manufacturers and sellers protect their brands on the platform, and cut the amount of lost sales to counterfeiters.  When enrolled, sellers can register their trademarks and products, search for counterfeits on the site, and report any located counterfeits for removal.

To be eligible to join Amazon’s (U.S. marketplace) Brand Registry, you must have an active trademark registration issued from the government of at least one of the following: United States, Canada, Mexico, India, Australia, Japan, France, Germany, Italy, Spain, United Kingdom, or European Union.  The trademark must be in the form of words, letters, and/or numbers, and must match the brand name printed on products or packaging.  Amazon provides a simple step-by-step process for enrolling with the Brand Registry, which includes entry of information relating to the trademark and corresponding products, as well as a verification process.

The Brand Registry makes it easy to search for and report violations of your trademark on Amazon.  You can search by product name, ASIN, brand name, images, or keywords.  A list of matching results will be shown, and the user can select boxes associated with each of the results which s/he would like to report as trademark (or copyright) infringements.

Enrolling in the Amazon Brand Registry, or services like it, will not stop people from trying to sell counterfeit pleasure products on Amazon or similar sites.  It will, however, make it easier to get counterfeit goods removed.  This is also likely to have a deterrent effect by making it more difficult for counterfeiters to sell since they’ll have to keep regrouping every time the offending listings are removed.  The Registry is a relatively easy and affordable weapon to add to your repertoire of enforcement measures for protecting your brand.

Although the Amazon Brand Registry is a useful tool for manufacturers and sellers who have government-issued trademark registrations, those who do not – or who are not enrolled – can still report infringements to Amazon to request corrective action here:  Many other websites have similar reporting procedures if you look through their terms of use agreements.  How successful you’ll be in getting an infringing product listing removed just from reporting it is difficult to say.  It depends on the policies and practices of the particular company running the website.

In combatting counterfeiters, it’s best to use a multi-faceted approach which takes into account several fronts.  This is especially true for companies that sell both services and products.  Make sure you are protecting your brand with trademark registrations for the goods in addition to the services you may have started with.  Once you have a trademark registration that covers the products, consider preventive steps such as registering your rights with CBP, as well as using programs set up by private companies such as the Amazon Brand Registry.  These are simple, easy, and potentially very useful additions to your arsenal.

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