New York partner Heather J. McDonald co-authored “Anti-Counterfeiting in Fashion,” printed in the Fall 2010 issue of Bright Ideas, a publication of the New York State Bar Association’s Intellectual Property Law Section. The article’s other co-authors were Barbara Kolsun, General Counsel of luxury shoe brand Stuart Weitzman, LLC, and Anita Surendran, Assistant to the General Counsel at Stuart Weitzman.
In the article, McDonald and her co-authors initially define the scope of the problem within the fashion industry. “Trademark owners not only incur the direct harm of lost sales, they also risk the long-term loss of customers. A consumer may choose not to purchase a genuine product from the trademark owner at a later date after owning a poor-quality counterfeit product bearing the same mark,” they wrote. In addition, online commerce is becoming an increasingly active target area for counterfeiters, spurring brand owners to action: “brand owners have recently carried the war on counterfeits into the digital arena in a number of closely watched lawsuits.”
The co-authors then summarize various anti-counterfeiting strategies and means of enforcement for brand owners in the fashion industry—ranging from civil seizure and third party liability actions to designation of in-house anti-counterfeiting resources and focusing efforts of trade organizations. “Brand owners must be prepared to invest considerable time and resources in protecting their trademarks,” the article concluded.