The Battle Against Counterfeits: Leveraging IP to Safeguard Brand Equity / IPWatchdog Unleashed

This week on IPWatchdog Unleashed, I explored the complex, fascinating and scandalous world of counterfeits, dupes and fakes with my guest, Gina Johnson, Chief Legal Officer of Ridge Wallet. Johnson shared her experiences and insights into fighting the never-ending onslaught of copycats and nefarious actors. Sadly, a successful company with a desirable product and brand must constantly remain vigilant to exclusively sell its products online, even when it has intellectual property that should offer protection against such flagrant violations.

Understanding the Landscape of Infringement

Johnson, who transitioned from a successful career as a patent litigator at K&L Gates to her current in-house role, describes the landscape of intellectual property (IP) and the protections necessary to fend off copyists. Initially, the challenge was to educate the market on the concept of a minimalist wallet and protect the invention against a market filled with imitators.

“There’s real money to be made by stealing somebody else’s intellectual property in the form of dupes, knockoffs, counterfeits, and the penalties are so low… It’s a problem that’s only going to continue to grow,” Johnson commented, highlighting the high stakes involved in protecting intellectual assets.

The Critical Role of IP Rights

Throughout the discussion, Johnson emphasized the importance of utilizing a multifaceted IP strategy to safeguard innovative designs and brand identity. “Given where we are today…our design patents that cover the silhouette are probably the most important to us right now,” she said, noting that infringers who copy the silhouette of the wallet are most likely to confuse consumers.

Ridge Wallet’s strategy involves a combination of trademarks that protect brand identity, utility patents that protect the innovative mechanisms inside the wallet, and design patents, which are crucial for preventing competitors from infringing upon the unique look and feel of their product. This comprehensive approach not only protects their products but also strengthens their market position against competitors.

The Amazon Challenge and Litigation Strategy

One particularly intriguing aspect of our conversation related to the hurdles faced when dealing with infringement on major online marketplaces like Amazon. Johnson shared lessons learned from her experience with Amazon’s policies, which can actually complicate efforts to remove counterfeit products when litigation is involved. “You don’t get to take them down if you’re in active litigation… [They said] ‘we have this policy that once you file a litigation, we let the court handle it….’ They told me it’s not a written policy but ‘just what we advise and what we do,’” she explained, shedding light on the necessity of understanding marketplace procedures to effectively combat illegal sellers.

Despite these challenges, Ridge Wallet leverages strategic litigation to protect their brand, utilizing tools like schedule A cases in the Northern District of Illinois to freeze assets of suspected infringers with no presence in the United States, and the so-called “Amazon court” to resolve infringement through means outside the federal litigation context when the goal is simply to get counterfeits and fakes removed from the Amazon platform.

“You need to have a reputation that [you’re] not playing around,” Johnson explains.

Insights for Emerging Brands

Johnson also provided crucial advice for startups and emerging brands: “You’ll never regret filing for even a provisional [patent]. You will only regret not doing it.” This proactive approach to securing IP rights can save businesses from future legal headaches and financial losses because by the time you know you need protection it is already too late to establish a filing that will ultimately result in the IP protection that is necessary.

More IPWatchdog Unleashed

You can listen to the entire podcast episode by downloading it wherever you normally access podcasts or by visiting IPWatchdog Unleashed on Buzzsprout. You can also watch IPWatchdog Unleashed conversations on the IPWatchdog YouTube channel. For more IPWatchdog Unleashed, see below for our growing archive of previous episodes.