Fashion and Trademarks
Interview with Joseph M. Forgione
By Kristina Scheurle, Senior Researcher at Corsearch
September 4, 2013
Joseph M. Forgione is the Director of Trademark Enforcement at the Gioconda Law Group PLLC, overseeing a large portion of the domestic and international intellectual property enforcement work on the Internet for a number of famous fashion brands, including Tiffany & Co. He is also an Adjunct Professor of Law at New York Law School, teaching Fashion Law in the Intellectual Property Job Track Program at the Institute for Information Law & Policy.Q: How has the Fashion IP industry changed since you first started as a trademark professional/ in the industry?
A: Counterfeiters are much more sophisticated now and they have greatly expanded the scope of their trade by utilizing a variety of new avenues available to them on the Internet that were not as popular years ago or, for that matter, even present. The sale and distribution of counterfeit designer goods in mass quantities has become fairly commonplace in avenues like business-to-business trade portals that facilitate exchanges of goods with the click of a button (e.g., Alibaba, Taobao, etc.), so brand owners in the fashion industry have begun focusing more attention and resources on enforcement in these types of problematic places.
Q: What issues are on your radar now that weren't in the past and why? And vice versa?
A: Large-scale counterfeit website litigations have taken shape as effective legal tools utilized by a variety of high-profile fashion companies in recent years to combat counterfeiting on the Internet and they have received much favorable publicity in the media. Most of the lawsuits have focused on large numbers of defendants engaged in trademark counterfeiting and cybersquatting while misappropriating designer trademarks in numerous domain names to sell large quantities of counterfeit designer merchandise. Brand owners in the fashion industry favor this type of action because final judgments are often entered in very large amounts alongside permanent injunctions against all of the defendants involved.
Q: What are 3 of the major current issues that you face in the trademark industry as it relates to Fashion?
Q: What advice or expertise would you share with someone who is just starting out in the Fashion, trademark industry today?
A: My advice to my students at New York Law School has been to gain both substantive and practical exposure to the field of fashion law by learning about the new legal issues affecting the fashion industry and also by taking advantage of any opportunities to meet the individuals playing a role in the development of these new legal issues.
Q: What are the opportunities and challenges that you face in what you do? How do you keep up with trademark news? What do you read? Do you use social media or follow any trademark professionals on social media?
A: The challenge of working in trademark enforcement in the fashion industry is staying optimistic. There is a tremendous amount of counterfeit merchandise being sold in a variety of avenues and the battle between counterfeiters and brand owners will continue to grow as more avenues become available in the future (e.g., 3D printing). Even despite the volume of counterfeit merchandise currently available in the market, it becomes important to recognize that all of the lawyers and legal professionals in our industry are working together as guardians of the intellectual property rights that designers have in their creations. This philosophy transcends the fierce competition that all designers face in the marketplace every day and, in essence, creates a unique opportunity to bind the entire fashion industry together in a common pursuit to solve a problem that has an impact on everyone.
I read many fashion law blogs and currently serve as the faculty advisor to CaseClothesed, a student-run fashion law blog that is hosted by the Institute for Information Law & Policy at New York Law School. I suggest reading the following for industry updates:
Q: How do aspects like color and shape play into your decision to register a mark/design, and how is it more difficult to protect?
A: My work at the Gioconda Law Group is focused on brick-and-mortar and online intellectual property enforcement for fashion companies, so these issues do not often play a significant role for me.
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