INTA Bulletin

February 15, 2017 Vol. 72 No. 3 Back to Bulletin Main Page

Mareesa Frederick: Protecting Fashion and Other Brands at the Border

INTA’s upcoming Brands and Fashion Conference, to be held in New York City from March 22–23, will be an opportunity for registrants from all backgrounds to learn about topics as diverse as how attorneys can “market” their own brand, corporate compliance, retail trends, and protecting your brand at the border. The latter topic will be the focus of a session moderated by Mareesa Frederick (Finnegan, USA), whose experience working at the U.S. International Trade Commission (ITC) for five years gives her unique insight into the issues brand owners face trying to curb counterfeits. The ITC has broad jurisdiction to investigate imported goods coming into the U.S. that could violate IP rights, and has been a useful tool for trademark owners seeking to keep fake goods out of the U.S. market. With speakers from a range of backgrounds and jurisdictions, Ms. Frederick’s session promises to provide ideas for registrants looking for creative solutions to keep counterfeit products from diluting their brands.

Ms. Frederick spoke with the INTA Bulletin about some of the key topics the session will cover and what those who attend can expect to take away.

What will be the focus of the session you’re moderating?
The session is titled “Protecting Your Brand at the Border: A Close Look at Using Law Enforcement and Customs to Fight Counterfeit Goods.” As that title suggests, we’ll feature panelists from the public, as well as the private, sector: The speakers will be Peter Ratcliffe from the City of London Police Intellectual Property Crime Unit (PIPCU); Heather J. McDonald (Baker & Hostetler LLP, USA), who has experience working with clients in the fashion industry; and Alaina Leigh Van Horn, an advisor with U.S. Customs and Border Protection. They will collectively address topics such as working with law enforcement and customs on the distinction between counterfeit and genuine goods, working directly with customs versus initiating an investigation with the ITC, and best practices for targeting counterfeits.

What are some of the more recent challenges brand owners are facing in this realm?
I think the biggest challenge is that the marketplace is becoming more global. Trade has increased across the borders, and with that, the number of counterfeit goods in the market has also increased. Counterfeiters are becoming more creative in coming up with ways to deliver their products to the U.S. consumer. Traditionally, counterfeiters would manufacture their counterfeit products overseas and sell it to an importer. The importer would, in turn, ship the goods in a container that would be inspected by customs. Counterfeiters are now using a newer model. Rather than shipping in large containers, counterfeiters are shipping directly to consumers, so it’s making it more difficult to police shipments at the border. We have to come up with different ways to combat counterfeit goods beyond what worked previously, such as seizing the assets as opposed to the products.

Would models like PIPCU, in which a dedicated team of law enforcement officers are working directly with brand owners and authorities on IP issues, be helpful? 
Yes, having specialty teams really goes a long way in helping to combat counterfeiting. The law enforcement officers, through their partnership with brand owners, develop a deeper understanding of the industry as well as the law around IP. Therefore, they can be more effective in helping brand owners enforce their IP rights against counterfeiters. 
What can registrants expect to take away from your session?
We were intentional about trying to create a diverse panel that includes speakers from outside the U.S., from law enforcement, from the federal government, and from private practice. My hope is that with all these diverse views and perspectives that the audience can come away with creative ideas about how to combat counterfeiting and that the public and private sector can learn new ways to work together.

Are there other sessions you’re particularly looking forward to attending at the conference?
I’m really interested in all of the sessions, including the keynote session where Mercedes Castillo will talk about how to build a luxury brand. Each session addresses the unique challenges facing the fashion industry and I am looking forward to learning something new. From a personal perspective, I am excited about getting tips on how to build my own brand (“Marketing Yourself as a Brand: Developing Longevity as In-House Counsel in the Fashion Industry”). We often hear about branding for companies; however, it's very important to develop your own personal brand in order to be successful in your industry. I am interested in getting some tips on how to do that effectively.

To register for INTA’s Brands and Fashion Conference, visit the conference homepage.

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