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Lynn E. Rzonca has more than 25 years of experience litigating trademark, advertising, copyright, and patent cases. On any given day, she may be enforcing trademark rights in federal court or before the U.S. Patent and Trademark Office, addressing infringement on social media, registering marks, or responding to a threat of patent infringement. In addition to helping leading retail clients protect and increase the value of their brands and IP assets, she advises clients during brand launches and advertising campaigns.

If you could identify the chief intellectual property issue you see fashion and retail clients facing, what would it be?

The biggest issue I see is counterfeit and grey market goods. Counterfeits create enormous problems for manufacturers and retailers. Fashion and retail companies invest significant resources in creating appealing products, developing their brands, and protecting the associated intellectual property—whether trademarks, copyrights, or design rights. When counterfeit items seep into the market, they erode all aspects of that investment. A consumer’s poor experience with a counterfeit can severely damage the goodwill a rightful brand owner has worked so hard to develop. Every fashion and retail company faces this issue.

What anti-counterfeiting initiatives are out there and do countries and their IP laws do enough for retailers combatting counterfeiting?

While almost all countries recognize intellectual property rights, not all protect those rights to the same degree. High counterfeit countries like China have been tackling counterfeits at the trademark registration level—providing grounds for companies to challenge so-called “bad faith registrations,” wherein a third party files an application to register your brand name, preventing you from exploiting your legitimate brand. The United States has also done work at the registration level. The U.S. Patent and Trademark Office has been trying to find new ways to address the counterfeit goods problem, ensuring compliance with statutory and regulatory requirements in trademark matters (e.g., registration audit programs; new regulations regarding foreign applicants). Enforcing compliance with other intellectual property protection laws may very well reduce the prevalence of counterfeit goods, or at least help ensure the legitimacy of the trademark register so that brand owners can maintain strong brands. As far as whether any country does enough to fight counterfeit goods, there is always more that can be done to protect brand owners and consumers. Investing in intellectual property protection so that brand owners have the ability to take down the grey market is a good start.

Major online retailers have been criticized for allowing vendors to post counterfeit items. In your view, whose responsibility is it to keep infringing goods out of the marketplace?

Everyone in the supply chain has a responsibility to fight against infringing goods. Of course, retailers want to ensure that their e-commerce sites aren’t a hosting ground for counterfeit goods, as that would deter legitimate retailers from selling on those platforms. While e-commerce marketplace providers will never be able to filter every non-legitimate product, it is important that they provide take-down procedures and quickly investigate and respond to take-down requests. And retailers can utilize their own consumer base to help keep counterfeits off-line, by educating consumers about what’s a legitimate good and how to identify products that are not legitimate or are not otherwise authorized. 

The Supreme Court doesn’t take up intellectual property matters too often, but it did recently with In re Brunetti. For those who missed that case, can you provide a brief synopsis and speak to its impact?

The case involved a streetwear clothing brand seeking a U.S. federal trademark registration for the mark FUCT. (The clothing was available in children and infant sizes.) Registration was denied on the grounds that the Lanham Act prohibits registration of “scandalous” or “immoral” marks. The Supreme Court held that the Lanham Act’s prohibition violated the First Amendment because it discriminated on the basis of viewpoint. In other words, what’s “scandalous” to one person might be humorous or inoffensive (and therefore not legally objectionable) to another. This case was just decided June 24, so we have yet to see the full impact of the ruling. While the removal of the ban doesn’t provide carte blanche rights to register curse words or other vulgarities, it will provide brand owners seeking federal registration with greater freedom of “brand expression.”

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