© 2018 The Texas Lawbook.
By Natalie Posgate
(May 30) – When you hear a lawyer say, “I’ve got to get to work now,” you typically think “office,” not “trade show.” But for two Houston attorneys, this is their reality.
Bruce Patterson and Nan Carr are frequent visitors at trade expos like the annual National Association of Music Merchants show in Anaheim, Calif. The lawyers, who represent the largest acoustic guitar maker in the U.S., attend so they can track down manufacturers of cheap knockoff guitars that resemble those of their client’s, Taylor Guitars, a little too much.
The knockoff manufacturers often hail from China, sometimes Korea. Because they’re only able to prosecute trademark infringement while the manufacturers are in the U.S., the two Patterson + Sheridan lawyers usually only have a few days to get the job done.
Two elements allow the duo to pull off the task. Patterson has three decades of experience in protecting clients’ trademarks, so he knows what to look for in the knockoffs. Carr, who grew up in Shenyang, China, speaks fluent Mandarin.
To protect Taylor, Patterson and Carr seek out vendors at NAMM who carry guitars that are the same shape as Taylor guitars. The shape of Taylor guitars is very distinct (shapes of products are considered nontraditional trademarks).
When they spot counterfeits, Carr approaches the sellers and explains to them in their own language – in a non-threatening way – that they are selling products that violate Taylor’s trademarks. In some cases, the sellers are not even aware that they are doing something illegal, and quickly agree to stop selling their knockoff guitars.
“Nan is very handy when it comes to communicating with people – figuring out who they are… helping us translate when [needed],” Patterson said. “It’s a combination of me having done this stuff for 30 years and her being comfortable with not just the language, but the culture.”
The team also helps several other clients protect their trademarks from counterfeit Chinese products, including Fox Factory, which makes off-road racing suspension components, and Olympia Tools, which makes a variety of hand tools sold through major retailers like Home Depot, Walmart and Amazon.
Trademark infringement of Taylor guitars is certainly harmful to the client, but Fox’s situation is more dire, Patterson says.
Because Fox is known for the shock absorbers it manufacturers for mountain bikes and off-road racing vehicles, its problem with counterfeit shock absorbers includes serious safety concerns.
“When someone counterfeits their products, it’s a big deal because somebody might be injured,” Patterson says.
Even worse than the display of knockoffs at trade shows is the sale of counterfeit clients’ products online; there, Patterson and Carr are constantly putting out fires only for others to surface.
“We can feel the frustration from the client, especially the Chinese online selling,” Carr said. “People from the U.S. and around the world can get in there and click the link and get the product that would be counterfeit. We try pretty hard to stop those and close the link, but the next day a different link will come up and it’s the same guys under a different name.”
If negotiations don’t go their way at the trade shows, Patterson and Carr take more serious measures. If a counterfeit producer shows up for the third time in a row, that’s when they file a lawsuit, they said.
Last year, when one such offender showed up for the third year in a row at NAMM, the Patterson-Carr duo filed a lawsuit in California state court. They successfully settled the case and got the counterfeit producer to admit to infringement of Taylor’s trademarks. They also secured a permanent injunction in the process.
Their work is already having an effect. They said “just last year” at NAMM there were not as many offenders as there had been in previous years.
“Our clients spend a lot of money on their brand and to produce goodwill,” Patterson said. “So, when we can prevent these sellers from trading our goodwill, that’s very rewarding.”
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