March 2021

Sideman & Bancroft’s Jeffrey Hallam Weighs in on INTA Resolution Designed to Strengthen Global Anti-Counterfeiting Efforts


Sideman & Bancroft’s Jeffrey Hallam delivered a presentation to the Board of Directors of the International Trademark Association (INTA) on March 18 on “Remarking as Criminal Counterfeiting,” one of two pending resolutions urging courts and policymakers to strengthen global anti-counterfeiting enforcement efforts. Mr. Hallam, Sideman & Bancroft’s Managing Partner and a leading member of the firm’s Brand Integrity and Innovation Group (BIIG), spoke to INTA in his capacity as a member of the association’s Anti-Counterfeiting Committee, which drafted the resolutions.

On March 18, INTA  approved both resolutions in a call to policymakers to make anti-counterfeiting the “highest priority.”

  • Remarking as Criminal Counterfeiting,” on which Mr. Hallam presented, involves adding products that are “remarked” or modified to the definition of “counterfeit” and calls for remarking to be considered a crime under anticounterfeiting laws. “This resolution addresses the loophole created by the Fourth Circuit in United States v. Cone, a case in which we represented Cisco as the victim,” commented Mr. Hallam. “It will now be interesting to see whether the weight of this resolution results in the adoption of new legislation in the United States and around the world to address the Cone loophole.”
  • Proceeds of Counterfeiting” is designed to empower courts with the legal basis to seize counterfeiters’ assets on a temporary basis prior to securing a conviction when proceeds appear to be the result of counterfeiting.

Read the full INTA press release here.