Brand Protection Issues Within the Small Business Community
By Zvi Rosen, Assistant Chief Counsel
In late September of 2019, the Center for Anti-Counterfeiting and Product Protection (A-CAPP) at Michigan State University brought together leaders in the field from government, academia, large business, and small business to discuss the challenges and opportunity of brand protection in 2019. Assistant Chief Counsel Zvi S. Rosen was there to carry on the mission of the Office of Advocacy to be the “voice of small business” on these issues, and to speak on a panel about the unique issues small businesses face protecting their brand and fighting counterfeiting without the resources of larger businesses.
When you distill it to its essence, a company is only as good as its name – the goodwill associated with that name is often a company’s most valuable asset. For instance, the Coca-Cola Company’s physical assets of bottling plants and the like are only worth a fraction of the value of the company – most of the value of the company is in the brand names. The same is often true of small businesses, but unlike Coca-Cola, or Tiffany, or other famous brands, many small businesses lack dedicated departments to protect their brand and prevent the goodwill associated with their brand from being diminished by inferior counterfeits and other unlawful uses of their brand names.
At a panel in the afternoon entitled “Challenges and Opportunities for Small and Medium Size Enterprises with Counterfeits,” Zvi Rosen was joined by representatives from the U.S. Patent and Trademark office, Alibaba, and representatives from two small businesses, to discuss their experience protecting the brands of small business. The conversation focused on multiple subjects – the process of enforcing trademarks abroad and preventing counterfeits from being made and sold, and the need to educate small businesses about the basics of international trademark protection and the need for a valid trademark registration in all markets where the small business may either be using the mark or intend to use the mark.
The need for education is particularly important, given the strong impression of all panelists that most small businesses do not realize that their U.S. trademark registration does not protect them elsewhere in the world. There is a process for a unified international trademark application through the Madrid protocol, but the cost of it can be a shock (even though it only represents each nation’s registration fees). There was a general sense that registration with the European Union and Chinese IP offices made sense for small businesses with any designs on spreading internationally and fighting counterfeiting.
Zvi Rosen is an Assistant Chief Counsel for Advocacy whose portfolio includes intellectual property. Rosen can be reached at email@example.com