On April 10, 2020, 3M, the largest U.S. manufacturer of N-95 masks, brought suit in the United States District Court for the Southern District of New York against Performance Supply LLC, a New Jersey business, alleging trademark infringement and price gouging. The suit alleges that Performance used 3M’s registered trademarks throughout the price quote document and technical specification sheets submitted to New York City officials to whom it was trying to sell millions of masks for up to six times the list price. In fact, according to the Wall Street Journal (April 10, 2020), researchers have identified thousands of other Instagram sites offering masks, many of which have been using photos of 3M masks.
On April 23, 2020, the ventriloquist and comedian Jeff Dunham filed suit in the United States District Court for the Central District of California, against multiple defendants, including the business Ooshirts, for copyright, trademark and trade dress infringement, alleging that the defendants misappropriated his world-famous ventriloquism characters to sell more than 1,000 different consumer products, including face masks and t-shirts.
While the scale of these frauds may be surprising, it’s not surprising that the COVID-19 crisis has presented widespread opportunities for trademark and copyright fraud, and 3M and Dunham may be only the most prominent examples.
There are some lessons here for trademark and copyright owners.
For trademark owners: First, although you have common law trademark rights when you use your brand, you should register your mark with the United States Patent and Trademark Office (“PTO”). A federal registration provides exclusive nationwide protection and is the key to your ability to enforce your mark against infringers. In cases of willful infringement, enhanced damages may be available to the trademark owner. (3M’s complaint demands treble damages, to be donated, along with any other damages awarded, to a COVID-19 charitable organization.) If you are doing business abroad, you should consider registering your mark in other countries. There are special procedures for using your U.S. registration to facilitate registration abroad.
If your mark is already registered, you need to be diligent about maintaining your registration at the five-year mark and renewing it after 10 years so that you do not lose it.
And you need to police your mark. Regular Internet searching for knock-offs is important, but you should also be aware of services that “watch” your mark and report when the owner of a potentially competing mark applies for registration or when a competing mark is published by the PTO for opposition. We subscribe to a trademark watch service and can monitor your mark for you and alert you if we see a potential problem.
For copyright owners: While you automatically own copyright in your creations, your ability to enforce your rights against others will be greatly enhanced by registering your copyright with the U.S. Copyright Office. Timely registration will entitle the successful copyright plaintiff to what is known as statutory damages (meaning you don’t have to prove the amount of your loss or the infringer’s profits from the infringement), enhanced damages for willful infringements and attorneys fees, so registration will, as a practical matter, often make all the difference in your ability to sue to enforce your rights.
It is also essential for copyright owners to be on the lookout for infringements. While there isn’t as efficient a watch system as for trademarks, there are tools that can be used. For example, Google image searches have helped many a photographer uncover online infringements of their works. While it may be tempting to assign a low priority to protecting and monitoring your trademarks and copyrights during these challenging times, in the long run it may be more important than ever.