The term “counterfeit” is usually defined as an unauthorized copy of a physical thing. Here is how Dictionary.com defines it:
3. an imitation intended to be passed off fraudulently or deceptively as genuine; forgery.”
Counterfeiters seek to expropriate the good reputation, good will and trust in a recognized brand by deceit to carve out undeserved profit or other gain. Their goal is to attract business they could otherwise not justify, through market confusion. The customer is unaware that he or she is confusing the counterfeiter’s product or service with that of the brand owner’s.
Anything can be counterfeited. Even, as I found out, a blog about technology intended to help secure the supply chain against crimes like counterfeiting. Hard to believe? Here is the story.
I have been writing RxTrace for over 6 ½ years now (see my first essay, “Welcome to rxTrace”). At first it was just an outlet for my interest in the topics listed in the tagline: “A comprehensive exploration of the healthcare supply chains, track and trace technology, standards, and regulatory compliance”, but after a few years, it grew in value to the people who needed a deeper understanding of these topics before they made huge investments. I grew it into a well-respected brand through nothing more than thinking and writing—an accomplishment I am pretty proud of (see “Writing Is Thinking. For Example, Ken Traub”).
In fact, for many years now, I have loyal readers from all over the globe. But for the first half of its existence, RxTrace was not a protected brand name. That was a mistake, because when Dieter Laevers, a consultant specializing in serialization and tracing of pharmaceuticals in Europe, decided he wanted to attract interest in his business, he created a LinkedIn group with the name “RxTrace”. Many of my followers immediately joined that group. Did you think that was me? It isn’t. When I discovered the new group I wrote to Mr. Laevers several times to tell him that the name “RxTrace” was “mine” since I had been publishing RxTrace the blog for about 3 years at that time and the subject matter of his group was exactly the subject matter of my blog. He did not respond (the mark of a coward), so I appealed to LinkedIn for control of the group. They denied my claim because I could not provide sufficient proof that I “owned” the term.
Fair enough. This experience lead me to apply for a trademark of the name with the U.S. Patent and Trademark Office (USPTO). I made the application after I started consulting in the same field as RxTrace and that site and brand became a significant lead generator for my business. The brand was widely recognized and people who were familiar with my writing were glad to have me as their consultant to help them understand the same topics. I was issued a Service Mark, registration number 4596471 on September 2, 2014 for the following uses:
- “IC 035. US 100 101 102. G & S: Business services, namely, providing online information for business planning in the field of healthcare supply chain management via a website; project management for business purposes in the field of healthcare supply. FIRST USE: 20090704. FIRST USE IN COMMERCE: 20120306”
- “IC 041. US 100 101 107. G & S: Educational services, namely, providing classes, seminars and non-downloadable webinars in the field of healthcare supply, namely, manufacturing, contract manufacturing, supply chain and supply management with respect to business process alignment, business case analysis and program prioritization. FIRST USE: 20090704. FIRST USE IN COMMERCE: 20120306”
I did not attempt again to claim ownership of the LinkedIn group from Mr. Laevers so the group still exists and he still owns it. By the time I owned the trademark the group had already grown stagnant and boring. Because I did not have any ownership claim on the brand “RxTrace” at the time he created it, Mr. Laevers did not technically or legally counterfeit RxTrace, but I still believe he was trying to capitalize on the RxTrace brand through market confusion. If only ten percent of his followers thought at the time that his group was related to my blog then he certainly benefited from that market confusion.
THE REAL COUNTERFEITER
Then late last year I performed a Google search on a topic I was researching for a new RxTrace essay when I found an essay attributed to “RxTrace”, but I did not write it. That produced a disorienting sensation—and then an angry sensation—that lasted over an hour. Clicking on the link I was taken to a website with the title “RxTrace blog” and the topic was pharma serialization and the Drug Supply Chain Security Act (DSCSA)—exactly a topic I write about all the time. How could this be? I clicked around and read the other few essays, and quickly become convinced that this individual was absolutely attempting to create market confusion with my brand. But this time it was registered and therefore protected, right?
The problem is, if you want to really enforce your trademark, you have to be willing to take violators to court. A quick Google search found many articles about the crippling cost of defending a trademark against a single violation. My only recourse was to try to reason with the consultant who was violating my trademark and causing the market confusion at the expense of my brand. So I called him up.
He knew exactly who I was (how brazen!). His defense was that I should have bought the “RxTrace.net” domain to block people like him from using it. Since he was able to buy that domain from GoDaddy, he thought he had every right to create a website and blog with that name. He clearly enjoyed the market confusion that resulted. He would have been able to approach the same prospective clients that I was approaching in competition with me, and he could claim that he was the author of the RxTrace blog.
I explained that I owned the trademark on RxTrace specifically for the purposes that he was using it, and I asked him to change the name of his site and blog. It took about four calls over several months, but he slowly made the change. Today he only uses the “RxTrace.net” domain to redirect to his new URL, which I find acceptable, and he retains a few references to “RxTrace” in his blog. At this point, I am satisfied with his changes.
Any brand that is respected can be the target of counterfeiters, even a blog. That respect has huge value in cynical times because, to build it takes time, money and a lot of hard work. Counterfeiters attempt to borrow that respect without paying the price. What is your counterfeiting experience?