September 2015

Kelly McCarthy writes “Brand Protection in the Web Marketplace: A Task for Mere Mortals?” for InsideCounsel


Most companies understand the importance of obtaining registered trademark rights in key jurisdictions and many are willing to periodically enforce those rights via the familiar cease and desist letters or similar non-litigation measures. In reality though, much more is required to combat infringement and relentless counterfeiting schemes. However, in an era where the modern in-house attorney is constantly tasked with “doing more with less” the idea of adding specialized areas of brand protection to the company’s plate is not one which is typically eagerly embraced. Unfortunately, failing to pay attention to these often overlooked areas of brand protection can cause irreversible damage to the brand, its reputation over time and the company’s bottom line. The good news? When approached thoughtfully, brand protection doesn’t have to be a time suck or a money pit.

In this six-article series we have so far highlighted four niche areas of brand protection which contribute to overall brand health. In the first article we discussed a cross market approach to parallel imports. In the second, we reviewed options for maintaining regulatory compliance and in the third, we discussed ways to incorporate criminal anti-counterfeiting statutes into enforcement efforts. In the fourth, we discussed the pitfalls and concepts of running ethical investigations. In this article, we explore the seemingly monumental task of enforcement in the ubiquitous Web marketplaces.