Overview
Your brand defines who you are. We understand your brand assets demand maximum protection.
Our team can skillfully manage and protect your brand assets throughout their lifecycle, while addressing today’s business challenges. We have achieved tremendous results for our clients by combining traditional intellectual property and brand protection practices with specialty components such as:
- Criminal intellectual property enforcement
- Criminal and civil gray market investigations and enforcement
- Global investigation management
- Online anti-counterfeit monitoring
- Global customs advice and program development.
We formulate brand protection strategies targeted to our clients’ particular situations and that are scalable in response to their changing needs. We understand the importance of return on investment and building a program that demonstrates the value of the program to the business. Our team includes highly experienced lawyers and former federal prosecutors, and global security and brand protection experts with extensive backgrounds leading anti-counterfeiting, anti-piracy and customs interdiction and investigation programs in both private companies and law enforcement agencies. Visit Sideman & Bancroft Europe for information on global intellectual property matters.
Areas of Concentration
Civil and Criminal Anti-Counterfeiting
Our attorneys assist companies in implementing brand protection strategies to halt the importation and sale of counterfeit goods. As part of this effort, we help companies target and investigate counterfeit traffickers, and then assemble and analyze evidence to support successful criminal investigations and prosecutions as well as civil litigation resulting in asset freezes, preliminary injunctions, and other remedies.
Since 2001, our team has actively worked with the Federal Bureau of Investigation, Homeland Security Investigations, Secret Service and other state and federal law enforcement agencies throughout the U.S. in its representation of victim companies, resulting in dozens of criminal convictions, jail sentences and restitution orders for criminal counterfeit trafficking. For example, we helped coordinate a massive "all government" effort to investigate the largest traffickers of counterfeit networking products, leading to over 30 convictions and the seizure of $143 million of goods. Relying on our team’s international law enforcement experience, we also actively coordinate investigations and law enforcement referrals in jurisdictions all over the world.
Copyright and Anti-Piracy Enforcement
The proliferation of electronic media and Internet commerce has dramatically altered and increased the risk of infringement of copyrights and other rights of authorship. Sideman & Bancroft attorneys help clients meet this challenge, as well as protect copyrights in traditional media by applying litigation skills to protect important interests.
Our team regularly analyzes the scope of copyright protection available for clients’ works; provides advice on copyrights in the context of the Internet; and works with clients to register, license and otherwise exploit their copyrights. We also are experienced in litigating the often complex issues surrounding disputes involving authorship, ownership, works for hire, copyrightability, originality, and fair use. Our attorneys also have developed and implemented criminal enforcement programs for clients addressing piracy.
Customs Support and Training
Sideman & Bancroft handles Customs support for clients’ brands, providing 24/7 response to Customs’ authentication requests and seizures of counterfeit goods. We design and implement training programs and materials to support brand integrity needs for Customs, law enforcement and internal stakeholders, tailored in each case to the audience and the locality.
Investigation Management
We have a global reach with a network of investigation resources, educated in the needs of discretion, trained to operate to the highest ethical standards, and with world-class professional skills. As a law firm, we retain investigative firms and then direct and manage complete investigations under the attorney-client privilege and work product doctrine (where applicable). We provide clients with a dedicated investigation manager, working at the client’s direction, to provide advice and management of the sensitive investigation process.
Metrics Budget Consulting
How do you quantify success? We can work with your company to quantify the illicit market share of your brand’s counterfeiters and then strategize to reduce it. We have world-class experience in building metric models and dashboards to show the positive uplift of your program to your business.
Online Monitoring
Sideman & Bancroft uses its in-house capabilities on behalf of its clients to monitor international and domestic web marketplaces for stolen and infringing products with the goals of reducing the amount of counterfeit products available online and increasing the transaction costs for persistent traffickers and infringers. Our team is familiar with the established “take down” protocols for web marketplaces all over the globe. Typically, after one to three months of diligent review and persistent take down filings, clients see a significant reduction in the instances of infringement on the monitored websites.
Sales, Discount and Warranty Fraud
If your company’s products are in high demand, then you are an inviting target to the perpetrators of fraud crimes. Companies may lose millions of dollars as a result of fraudulent misrepresentations made to obtain product discounts or warranty replacements. Our firm assists companies that are fraud victims. We investigate these crimes, and refer appropriate cases to law enforcement agencies and prosecuting authorities. Not every case is appropriate for criminal referral, and we pursue civil remedies when criminal enforcement is not warranted. We have brought dozens of cases successfully to law enforcement for investigation and ultimately prosecution, which often includes orders of restitution to restore the value of the goods to the victim. Similarly, we have negotiated civil settlements with perpetrators prior to initiating litigation, and when necessary, have filed litigation and aggressively pursued claims to successful conclusion.
Supply Chain and Distribution Channel Integrity
Successful brand protection includes effective contracts ensuing for supply chain and distribution channel integrity. As supply chains become increasingly global and complex, and as counterfeiters become more proficient, it becomes easier for counterfeit and substandard goods to be introduced into the commerce stream, negatively affecting brand owners and their consumers. Even well-meaning suppliers can cause damage to a brand if they are operating without meaningful controls on supply schedules or effective constraints on their use of client intellectual property. Similarly, failure to control distribution channels can foster piracy or fraud, or simply result in tarnishing a brand.
We are adept at working with clients to evaluate and modify their global supply and distribution contracts with the goal of tightening the supply chain and distribution channel to address these issues. We scale our services depending on the dollar value or strategic importance of the supplier or distributor and often work with clients to develop client-customizable form documents for their ongoing use in contracting with suppliers and distributors. While strong contracts are a critical component of supply chain integrity, we also assist clients whose contracted partners breach their contracts, with the twin goals of enhancing compliance and addressing the lapsed supply chain partner (by obtaining damages, cooperation, and other results that aid the client).
System and Data Security
Sideman & Bancroft assists clients that are the victims of data breaches with restoring system integrity and security, implementing remedial measures, and defending against government enforcement actions and private claims. We provide regulatory and compliance counseling to corporate clients and law firms on a wide variety of data security statutes and standards, assist with information security risk assessments, and advise on risk management concerns.
Trademark Counseling and Prosecution
Whether clients own a single trademark registration or several hundred, Sideman & Bancroft offers personalized, timely and cost-effective services prosecuting and managing their portfolios. We work with clients to design trademark and branding strategies that function best for them, whether in the context of company start-ups, new product rollouts, or taking a successful company to the next level of brand protection.
Trademark Enforcement
The value of trademarks, service marks and trade dress is greater than ever before. We routinely prosecute and defend infringement, dilution, unfair competition and false advertising claims involving both registered and unregistered trademarks and service marks, in addition to pursuing a wide variety of trade dress claims. Protection of a global brand means understanding risks and concerns regarding enforcement issues in the U.S. as well as in foreign jurisdictions. We have obtained ex parte writs of seizure for counterfeit parts and labels in the U.S. and other countries. In collaboration with local counsel, we also have pursued and defended trademark and service mark claims in jurisdictions around the world.
