IP Investigations: Trade Dress

Intellectual Property Investigations, Trade Dress, Continental Enterprises

Question: Someone is marketing a product that looks almost exactly like ours. What can we do about it?

Genericization and the public domain are constantly looming threats for famous marks. While brand saturation is a common goal of many intellectual property ("IP") owners, lax enforcement can quickly lead to rampant and uncontrollable misuse of a trademark. Continental Enterprises ("Continental") can and has reversed this trend, recovering intellectual property thought to be lost to the public domain. Our innovative approach has converted profitless sales of non-licensed products into income-producing assets.

Our approach seems somewhat counterintuitive in that we focus on distribution chains instead of large manufacturers. Stopping retail sales of unlicensed goods eliminates the ability of manufacturers to distribute their products. Thus, when negotiations with manufacturers take place, the demand for their unlicensed products has already begun to dry up. This results in a decisive negotiating advantage for our clients as we reassert their IP rights. Using this approach has allowed us to obtain compliance and recover damages from once-recalcitrant foreign manufacturers without resorting to litigation.

The effectiveness of this strategy is a function of our ability to accurately triage cases and manipulate economic forces to our clients' advantage. We begin at the periphery of the problem and establish a consistent record of enforcement. This reinforces the strength of the mark, opens the marketplace up for legitimate goods, and paves the way for an assault on the core of the problem.

Continental has employed this tactic to return marks to clients who had all but relinquished them to the public domain. Our trademark reclamation efforts have also been the basis for developing a robust licensing program to supplant markets in which counterfeits dominate. This is a clear example of how a business-focused solution can produce a victory where protracted litigation would likely fail.