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SEMA Show and Your Business’ Intellectual Assets: What to Do When You Find Counterfeits of Your Product at the SEMA Show (Part 1 of 4)

Las Vegas Convention Center, SEMA Show 2016

Every November, tens of thousands of high performance and aftermarket automotive manufacturers, distributors, buyers and service providers from around the world descend on the Las Vegas Convention Center for the annual Specialty Equipment Market Association (SEMA) Show. Known as the mecca for automotive enthusiasts, the SEMA Show consistently ranks as one of the world’s largest trade shows.

With the size and scope of the SEMA Show, and the lucrative opportunities it offers to present your products and brands to potential buyers, comes the need to ensure that your innovations and brand identifiers are properly protected. This four part series provides a broad overview of the patent, trademark, copyright and trade secret considerations that all companies should address as part of their SEMA Show planning.

This first of our four part series deals with how to protect yourself against counterfeits of your products exhibited at the SEMA Show. Counterfeiting is an unfortunate reality of the modern global business environment. With the proliferation of e-commerce websites, more and more businesses find themselves dealing with counterfeit products intruding on their market.

Counterfeiting occurs when an unauthorized manufacturer or distributor offers a copy, replica or imitation of a product under a legitimate brand name or image. The counterfeiter’s goal is to entice buyers to purchase their imitation instead of buying the authentic product from a legitimate manufacturer or distributor. Often, the counterfeit is of poor quality and craftsmanship. By associating their counterfeit product with your legitimate brand, counterfeiters not only divert sales of your product to themselves, they can also dilute your brand value as consumers begin to associate your brand with their products.

Due to its size and scope, some counterfeiters view the SEMA Show as an attractive opportunity to market their imitation products. However, businesses who find their products counterfeited at the SEMA Show are not without recourse.

On the next two pages are some things you should think about when addressing suspected counterfeiting at the SEMA Show.

Register Your Intellectual Property Rights Before the SEMA Show

Businesses have few options, at the SEMA Show or otherwise, for dealing with counterfeiters if they do not have intellectual property registrations (trademarks, copyrights or patents) in place. Without proof of a registration, SEMA cannot take action against counterfeiting exhibitors, and the State and Federal Courts are unlikely to take action to shut down the offending exhibitor. Whether your registration is a trademark on a key brand name or logo, a copyright on photographs or artwork used in your booth, or a patent on a new innovation, make sure your intellectual property registrations are in place and that all maintenance fees are up-to-date before the SEMA Show.

Make Sure You Own Your Intellectual Property Rights

Did you purchase a patent from another inventor or company? Did someone outside of your company design one of your logos? These are just a few instances where someone else may have had ownership rights in your intellectual property before you. Without clear evidence that you own your registrations, you may be unable to enforce them against a counterfeiting exhibitor. Make sure that you have proper documentation assigning ownership rights of all patents, logo artwork, photographs and drawings to your company before the SEMA Show, and that documentation is on file with the appropriate intellectual property office (the United States Patent and Trademark Office or the United States Copyright Office).

Bring Supporting Documentation With You to the SEMA Show

A counterfeiter’s first defense to any action taken against them is usually that you do not actually own the rights you are trying to assert against them. Either you do not have the patent, trademark, or copyright registration, or someone else owns the registration. Having documentation available at the SEMA Show (copies of your trademark registrations, copies of agreements assigning ownership to your company, etc.) goes a long way towards circumventing this defense.

Familiarize Yourself With SEMA’s Intellectual Property Rights Policy

Every exhibitor at the SEMA Show must agree to abide by SEMA’s Intellectual Property Rights Policy. If you have reason to believe that an exhibitor is counterfeiting your products, you can report that exhibitor to SEMA for investigation. If SEMA finds that your intellectual property rights are being violated by a counterfeiter, they can take action including banning the counterfeiter from future SEMA Shows.

On the next page, read additional avenues for addressing suspected counterfeiting at the SEMA Show.

Consider Taking Action in State or Federal Court in Nevada

Remember, these are your company’s rights, and you have to be the one to enforce them. SEMA is not always in a position to address every instance of counterfeiting. If SEMA cannot take action, you can file a lawsuit in State or Federal Court in Nevada to enforce your rights. The Courts can issue relief, up to and including a seizure order shutting down the counterfeiter’s booth and removing them from the SEMA Show. Enforcing any seizure order should be coordinated through SEMA out of courtesy to them as the event organizer. and in order to make the process as seamless as possible.

As a practical matter, any Court action should be filed early in the week of the SEMA Show. Lawsuits filed on Wednesday, Thursday or Friday are unlikely to be brought to the Court’s attention in time for the Court to act on the filing before the SEMA Show ends, and the counterfeiter packs up and disappears. These lawsuits require an extensive amount of evidence gathering, writing and filing on Sunday, Monday and/or Tuesday. If you have reason to believe you will be counterfeited at the SEMA Show, please contact your attorney early to review and evaluate your Court options.

Nevada State Trademark Registrations – A Last Resort

Don’t have a U.S. trademark registration for the logo or brand name that is being counterfeited? Never fear. Nevada offers local trademark registrations. For a fee, these trademarks can be processed on an expedited basis in as little as one day. In other words, if you show up to the SEMA Show on Monday and find that someone is counterfeiting products using a logo that you do not have a U.S. trademark registration for, you can still file a Nevada state trademark application and have it processed that day. You can then use your Nevada state trademark registration to file a lawsuit in Nevada State Court against the counterfeiter.

Preparation is key when dealing with counterfeiters at the SEMA Show. If you have any reason to believe that your products might be counterfeited at the SEMA Show, please contact an attorney of your choosing immediately to discuss your options

Stay tuned for additional blogs on protecting your innovations and brand identifiers at the SEMA Show.

Part 1 – Aug. 15 What to Do When You Find Counterfeits of Your Product at the SEMA Show

Part 2 – Aug. 23 Protecting Your New Products at the SEMA Show

Part 3 – Sep. 6 Protecting Your Trademarks and Brand Identifiers at the SEMA Show

Part 4 – Sep. 12 Using Artwork and Photographs in Your SEMA Show Booth and Literature

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