Jewellery and Watch IP Checklist: Design Filings, Hallmark and Marking Compliance, Serialisation and Authentication, Resale and Servicing Terms, and Counterfeit Response

By Casey Scott McKay · 2024-03-11

This checklist audits the intellectual property position of a jewellery or watch business in the order the questions arise. It starts with the design portfolio and the secondary meaning file, because the designs that carry a house outlive their design patents and the trade dress claim of two decades hence depends on evidence gathered now. It then covers the technical portfolio, marking and gemstone compliance, serialisation and the archive, the dealer network, resale and modification, servicing and parts, authentication, counterfeit response, and licensing and chain of title. Gate items mark the points at which work should stop until a specific artefact exists.

IP and Technology > Trademarks | Checklist | Published 11 March 2024 - Updated 8 August 2025 | Casey Scott McKay - marksy.us

Summary. This checklist audits the IP position of a jewellery or watch business in the order the questions arise. It starts with the design portfolio and the secondary meaning file, because the designs that carry a house outlive their design patents and the trade dress claim of two decades hence depends on evidence gathered now. It then covers the technical portfolio, marking and gemstone compliance, serialisation and the archive, the dealer network, resale and modification, servicing and parts, authentication, counterfeit response, and licensing and chain of title. Gate items mark where work should stop.

Keywords: jewellery checklist · design filing layers · broken line practice · secondary meaning evidence · functionality documentation · fineness marking · responsibility marks · gemstone disclosure · serialisation records · archive management · modification policy · quality control programme · dealer network audit · authentication data terms · counterfeit component enforcement

How to use this checklist

| Phase | What it produces | Who runs it | Gate | |---|---|---|---| | 1. Design portfolio | A model-by-protection grid with gaps identified | IP counsel | Nothing disclosed before filing decisions | | 2. Secondary meaning | An evidence file organised by design | Brand and counsel | Collection started for the top models | | 3. Technical portfolio | Utility filings and secrecy decisions | Patent counsel | Trade dress features flagged before utility claims | | 4. Marking | Compliance confirmed per market | Compliance and counsel | No market entry with unresolved marking | | 5. Serialisation | Records, papers, and a funded archive | Operations and counsel | Archive has an owner and a budget | | 6. Dealers | Quality control and termination terms | Retail and counsel | Return obligation in every agreement | | 7. Resale and modification | A published policy applied consistently | Brand and counsel | Policy written before enforcement | | 8. Servicing | Parts and information position | Service and counsel | Competition review completed | | 9. Authentication | A deliberate posture and data terms | Brand and counsel | Terms drafted as a licence | | 10. Counterfeits and title | Component enforcement and clean chain | Counsel | Chain traced to first registration |

The matter. An established house sells six watch families and a jewellery collection, licenses its name for eyewear and fragrance, sells through 200 authorised dealers and its own boutiques, and has just discovered that a modification business is selling stone-set versions of its steel sports model at a premium. Its signature case shape was registered in 1971. Nobody has collected advertising figures by model. The archive is in a warehouse under a facilities budget.

What sits on the object

Before auditing anything, be precise about how many regimes land on a single piece, because a practitioner advising on one usually needs to check the other four.

Design patents on the case shape, bezel, bracelet, clasp, and dial layout — each a separate filing with its own term, and a portfolio built over decades will have some in force and many expired.

Trade dress in the overall appearance, provided it identifies source and is non-functional. This is the right that outlives the design patents and the hardest to establish.

Trademarks on the dial, crown, clasp, and case back — word marks, figurative marks, and position marks claiming a mark applied at a specified location.

Copyright in dial artwork, engraving, and any sculptural element separable from the utilitarian article.

Utility patents on the movement — escapements, winding systems, shock protection, materials, complications — where the technical work is.

Trade secrets in finishing techniques, alloy formulations, assembly tolerances, and regulation methods.

Statutory markings applied by legal requirement rather than brand choice: fineness marks, assay marks, responsibility marks, and origin indications.

Serial numbers and provenance records, which are not rights but underpin every later authentication claim.

[ ] Map all eight for the flagship model before starting the audit, since a single act — a modification, a resale, a repair — implicates five regimes at once.
[ ] Identify which regimes have an internal owner and which have none. Statutory markings usually sit with compliance, trade secrets with manufacturing, and provenance records with customer service, none of whom attend the intellectual property meeting.

Phase 1. Audit the design portfolio

[ ] Build a grid: top twenty models by revenue down the side; design patents in force, design patents expired, registered marks covering elements, unregistered trade dress asserted, copyright registrations, and utility patents on components across the top.
[ ] Identify the signature model with nothing in force. The design that defines the house was registered decades ago and has expired; its only protection is trade dress and nobody has assembled the evidence.
- Why. This is the most valuable asset in the business and the least documented, and remedying it takes years rather than months.
[ ] Identify component copying with no component filing. Competitors copy the bracelet or clasp rather than the whole watch, and whole-article filings do not reach them.
[ ] File in layers on every commercially significant design: one application on the whole article, separate applications on the case, bezel, bracelet, clasp, dial layout, setting, and link.
[ ] Use broken lines deliberately to claim the contour that carries recognition and disclaim the rest, since a drawing claiming everything is avoided by changing anything.
[ ] Fix the disclosure calendar. A design shown at a trade show and filed nine months later has lost every jurisdiction without a grace period, and 35 U.S.C. § 171 filings must run ahead of the marketing plan.
[ ] Weigh the remedy in the filing decision, since 35 U.S.C. § 289 permits recovery of the infringer's total profit on the article of manufacture and makes design patents unusually powerful here.
[ ] Flag any feature intended for trade dress that is covered by a utility claim, because an expired utility patent is strong evidence of functionality supplied by the claimant.
[ ] [Gate] No design is publicly disclosed before the filing decision is recorded.

Phase 2. Build the secondary meaning file

[ ] Accept the requirement. Product design trade dress is never inherently distinctive and always requires secondary meaning, per Wal-Mart Stores, Inc. v. Samara Brothers, Inc..
[ ] Organise evidence by design rather than by brand: advertising spend per model, unsolicited press mentioning the design, sales volumes and revenue by model, and any survey touching recognition.
[ ] Run look-for advertising where a design matters, since advertising that directs consumers to a feature builds the record at no extra cost.
[ ] Document non-functionality contemporaneously: alternative designs performing the same function, internal records showing aesthetic rather than engineering motivation, and an audit of utility claims.
- Trap. TrafFix Devices, Inc. v. Marketing Displays, Inc. makes functionality an absolute bar and treats an expired utility patent as strong evidence of it, so the audit matters as much as the alternative designs.
[ ] Register what can be registered: position marks, shape marks where the jurisdiction permits, and figurative marks covering distinctive elements.
[ ] Protect the retail environment and packaging, which can be inherently distinctive following Two Pesos, Inc. v. Taco Cabana, Inc. — a lower bar than product design.
[ ] Register dial artwork and separable sculptural elements as copyright, applying the test in Star Athletica, L.L.C. v. Varsity Brands, Inc..
[ ] Register product photography, which gives a faster marketplace takedown route than a trademark argument.
[ ] [Gate] Collection has started for the top ten models before any trade dress claim is asserted.

The four gaps that appear in every portfolio

Having built the grid in Phase 1, expect these four and fix them in this order.

The signature model with nothing in force. Largest exposure, longest remedy. The secondary meaning record is a multi-year exercise that cannot be compressed, which is why it starts immediately even though nothing is threatening the model this quarter.

Component copying with no component filing. Available immediately for current designs, and a filing decision rather than an evidence-gathering one. Competitors copy the bracelet and the clasp because those parts are what a customer recognises across a room, and a whole-article registration whose overall visual impression differs will not reach them.

New models filed late. A process change rather than a legal problem. Put the filing decision upstream of the marketing calendar, name the person who signs it off, and treat a trade show booking as a filing deadline.

Utility claims undermining trade dress. A drafting discipline going forward and a strategic decision going back. Where a house's own expired utility patent covers a feature it now wants to assert as trade dress, the claimant has supplied the strongest functionality evidence against itself, and the honest answer may be to assert a different feature.

[ ] Record the four findings and their owners in writing, since a grid produced and filed is a grid nobody acts on.
[ ] Re-run the grid annually, because design patents expire on a schedule and the population of models with nothing in force grows every year without anyone noticing.

Phase 3. Run the technical portfolio separately

[ ] Harvest movement inventions on ordinary patent timelines: escapements, regulating organs, materials, complications, and sealing systems.
- Why. Uniquely in luxury goods, classical patent enforcement works here — the accused article is purchasable and the infringement is visible under a loupe.
[ ] Test composition claims for breadth against 35 U.S.C. § 112 and the discipline confirmed in Amgen Inc. v. Sanofi, since alloy and coating claims covering ranges supported by few examples are vulnerable.
[ ] Put a brand-side reviewer in the harvesting session, so features intended for trade dress are flagged before a utility claim is drafted over them.
[ ] Keep manufacturing processes as trade secrets: finishing, assembly fixtures, and regulation methods are unobservable in the finished article and better protected on the footing 18 U.S.C. § 1839 requires.
[ ] Disclose technical information to suppliers and authorised service centres under terms specific to technical data, with marking and access control.
[ ] Run freedom to operate before tooling an in-house calibre, since movement development draws on a shared technical heritage and the tooling is the expensive part.
[ ] [Gate] No utility claim is filed over a feature the brand intends to assert as trade dress.

Phase 4. Confirm marking and disclosure compliance

[ ] Verify fineness marking in every market: permitted tolerances, prescribed form, and consistency with the actual alloy.
- Trap. Marking an article with a quality claim it does not meet is a statutory violation and, where a competitor is harmed, a false advertising matter under 15 U.S.C. § 1125.
[ ] Register the responsibility mark where required and record it in the trademark register even though it arrived through compliance rather than through the brand team.
[ ] Confirm assay hallmarking requirements in compulsory jurisdictions and the mutual recognition position under convention arrangements.
[ ] Verify country of origin marking for articles assembled from components sourced in several places, since the rules are technical and detention is the consequence of getting them wrong.
[ ] Disclose laboratory-grown status using terms consumers understand rather than euphemisms.
[ ] Disclose treatments and their permanence, including any special care required.
[ ] Substantiate sourcing claims — ethically sourced, conflict-free, country statements — with chain-of-custody documentation held as the substantiation file.
[ ] Confirm certification scheme compliance where a scheme mark is displayed, since the right to use depends on verified compliance rather than ordinary licensing.
[ ] Treat grading reports as branded products with security features, and act against forged reports bearing a laboratory's marks as counterfeiting.
[ ] Check provenance narratives, since a named mine, historic collection, or former owner sold with a piece is a representation and an unsupported material one is actionable.
[ ] Put marking compliance and brand protection in one quarterly meeting.
[ ] [Gate] No market entry proceeds with an unresolved marking question.

Phase 5. Fix serialisation and the archive

[ ] Serialise comprehensively and record the number, model, date, market of first sale, and authorised dealer.
[ ] Secure the papers. Warranty cards, certificates, and boxes are counterfeited as a separate trade because they make a fake resell at a real price. Treat them as products with security features and controlled printing.
[ ] Register the packaging so enforcement against box sellers has a clean basis that does not require examining the watch.
[ ] Decide the digital certificate strategy, recognising that the resulting database is something the brand controls and that access terms determine whether the resale market depends on the brand or routes around it.
[ ] Give the archive an owner and a budget. Design files, drawings, advertising, and press, retained indefinitely and indexed.
- Why. It is the evidence for every trade dress claim decades away, every heritage revival, and every authentication of an object sold thirty years ago — and it is routinely managed as a storage cost by someone with no idea what it is for.
[ ] Address the data protection dimension, since a database linking serials to named purchasers is personal data and allocation or blacklisting practices built on it need a lawful basis and a retention position.
[ ] [Gate] The archive has a named owner and a line in a budget before anything else in this phase.

The archive audit

This phase produces the most alarming findings in the whole checklist, and it is usually the first time anyone has asked.

[ ] Establish what exists. Design drawings and technical files by model and year. Advertising artwork and media schedules. Press cuttings. Photography. Production records. Serial ledgers. Correspondence with dealers and suppliers. Historic catalogues.
[ ] Establish where it is — head office, a warehouse, a factory, a retired employee's garage, a museum on loan, or a former parent company after a divestment.
[ ] Establish who is responsible and under whose budget. The common answer is facilities, which means the retention decision is made on storage cost by someone who has never been told what the material is evidence of.
[ ] Establish the condition and format. Paper degrades, magnetic media becomes unreadable, and proprietary digital formats from the 1990s may need specialist recovery. A digitisation programme is cheaper the earlier it starts.
[ ] Index it. An archive nobody can search is an archive nobody uses, and the value is realised in the moment somebody needs to prove what a 1978 advertisement said.
[ ] Set a retention policy that says nothing is culled without IP sign-off, and communicate it to whoever currently holds the material.
[ ] Check what left the business. Divestments, factory closures, and licensee terminations all move records, and material sold with a divested brand may be material the retained business needs.
[ ] Confirm the serial ledger is complete and readable, since it is the evidentiary spine of every authentication and every provenance dispute the house will face.

Phase 6. Audit the dealer network

[ ] Treat dealers as licensees and confirm the quality control obligation is exercised rather than merely reserved.
- Trap. A brand supplying imagery and fixtures without controlling their use has a naked licensing exposure supporting cancellation under 15 U.S.C. § 1064.
[ ] Approve advertising by template rather than by individual post, which is the only version of the process that survives contact with a dealer network.
[ ] Fix termination provisions: return of fixtures, signage, imagery, and stock, since a former dealer continuing to present as authorised is the most common enforcement problem in the network.
[ ] Control online presentation, and use registered product photography for fast takedowns against unauthorised sellers copying it.
[ ] Review know-your-customer obligations imposed on dealers, which push an enforcement burden onto parties poorly placed to carry it.
[ ] Track grey market leakage to source before asserting, since a material difference argument is weakened where the brand's own network supplied the goods.
[ ] Require return of display and merchandising materials on termination.
[ ] [Gate] No dealer agreement renews without an exercised quality control mechanism and a return obligation.

Boutiques, packaging, and merchandising

[ ] Document the boutique concept as a protectable asset with a design manual, photographs, and a record of consistent implementation across locations. A distinctive retail environment can be inherently distinctive, which is a materially lower bar than the one product design faces.
[ ] Register the packaging separately from the product marks. Boxes, pouches, and presentation cases are counterfeited as their own trade, and a packaging registration gives a clean basis to act against box sellers without examining the watch.
[ ] Control presentation inside multi-brand retail, where marks and fixtures appear in an environment the brand does not own and the arrangement is a licence carrying quality control obligations.
[ ] Audit the online storefront and dealer storefronts for consistency, since a fragmented presentation weakens the trade dress claim the consistency was supposed to support.
[ ] Require return of display and merchandising materials on termination and confirm that somebody actually collects them.

The counterfeit supply chain

[ ] Map the component tiers — cases, dials, hands, bracelets, movements — since they are made by different suppliers and assembled elsewhere, and enforcement upstream is more effective than pursuing sellers.
[ ] Distinguish quality tiers in the response. Obvious fakes sold openly are a takedown problem; pieces using correct materials and movements accurate enough to require disassembly are a serial-records problem and belong with the authentication function.
[ ] Prepare brand-specific customs guidance with photographs of genuine and counterfeit marks at the scale they actually appear.
[ ] Use image copyright for marketplace speed, since a platform's copyright process is more automated than its trademark process.
[ ] Record which enforcement actions produced which outcomes, so the programme can be evaluated rather than merely funded.

Phase 7. Set the resale and modification position

[ ] Establish what the brand cannot stop: resale of a genuine article, truthful statements that an independent services its watches, and a purchaser disposing of what it bought.
[ ] Assess material difference honestly where grey market goods are involved, recognising that warranty differences, specification differences, and absence of domestic quality control have supported findings and that the threshold is a difference consumers would consider relevant.
[ ] Build a real quality control programme before relying on it.
- Trap. A programme assembled for litigation is visible as such, and the argument fails on the evidence rather than on the doctrine.
[ ] Require prominent disclosure of reconditioning, following Champion Spark Plug Co. v. Sanders, which permits reconditioned goods to bear the original mark where the reconditioning is adequately disclosed — in practice, prominently enough to survive a resale listing photograph.
[ ] Publish a modification policy stating what voids the warranty, what service centres will decline, and what the brand will enforce against.
[ ] Enforce selectively and consistently, targeting modifiers who fail to disclose, imply authorisation, or copy protected design elements — not every modifier who accurately describes the base article.
- Why. A modifier making nominative use of the brand name to identify what the piece started as is on defensible ground, and litigating against it produces adverse decisions the brand then lives with.
[ ] Distinguish description from badging, since using the name to say what the watch was is different from applying the mark to the modified product as its own badge.
[ ] Assert design rights against replacement parts that replicate the brand's patterns, independently of the trademark analysis.
[ ] State the position on mark removal rather than improvising it.
[ ] Review allocation and flipper measures for what they actually are: resale restrictions function as friction rather than prohibition, serial tracking and allocation refusal are commercial decisions with a data protection dimension, and service refusal outside warranty raises competition and consumer protection questions.
[ ] [Gate] The modification policy is published before any enforcement action against a modifier.

Phase 8. Settle the servicing and parts position

[ ] Map the levers and their limits. Restricting parts supply is a commercial decision that attracts competition scrutiny. Withholding manuals relies on copyright and trade secret. Preventing a false claim of authorised status is a trademark right; preventing a truthful statement of what an independent services is not.
[ ] Apply the repair and reconstruction line where a patented movement component is replaced, following Aro Manufacturing Co. v. Convertible Top Replacement Co..
[ ] Recognise that post-sale parts restrictions run in contract, since an authorised sale exhausts the patent right under Impression Products, Inc. v. Lexmark International, Inc..
[ ] Obtain a competition review of the parts policy in every material market, and expect regulatory and legislative attention to aftermarket restriction to continue growing.
[ ] Protect service manuals and tolerances properly: marked, access-controlled, and disclosed to authorised centres under technical-data terms.
[ ] Confirm the service policy on modified and grey market pieces is written and applied uniformly.
[ ] [Gate] No parts restriction tightens without a competition review.

Phase 9. Choose the authentication posture

[ ] Recognise what platforms are doing. Describing an item by reference to the mark is nominative use; applying a tag to the goods is something more and edges toward the altered-goods analysis.
[ ] Identify the harms in both directions: a platform certifying a counterfeit as genuine, and a platform declaring a genuine item counterfeit.
[ ] Choose a posture deliberately. Refusing all cooperation pushes the market to authenticate without the brand, using standards it did not set.
[ ] Draft data access terms as a licence: rate limits, permitted uses, prohibition on database construction, audit rights, and termination.
[ ] Keep the internal authentication capability, since a brand that cannot authenticate its own products quickly has outsourced its identity.
[ ] Establish an escalation path for disputed items so that a contested authentication does not become a public dispute.
[ ] [Gate] No verification data is shared without terms drafted as a licence.

[ ] Confirm the house can authenticate a thirty-year-old piece within a working day, since resale market confidence and every provenance dispute depend on that turnaround, and a capability that takes three weeks is a capability the market routes around.

Phase 10. Counterfeit response, licensing, and chain of title

[ ] Record marks with customs in every material market, including packaging registrations alongside product marks.
[ ] Train customs and investigators for tiny surfaces, since a counterfeit dial bears a mark a millimetre high.
[ ] Pursue component suppliers upstream — cases, dials, hands, bracelets, movements — rather than only assemblers and sellers.
[ ] Use the statutory tools: 15 U.S.C. § 1114 for infringement, 15 U.S.C. § 1116 for injunctive relief and seizure, and 15 U.S.C. § 1117 for damages including statutory awards.
[ ] Separate grey market from counterfeit in the enforcement approach, since they are different problems.
[ ] Press marketplaces where knowledge and control exist, applying the contributory framework from Inwood Laboratories, Inc. v. Ives Laboratories, Inc..
[ ] Exercise quality control in every licence — eyewear, fragrance, accessories — with inspection, approval, and records rather than a reserved right nobody uses.
[ ] Allocate collaboration designs: ownership, reissue rights, unsold stock, and future marketing references.
[ ] Check franchise exposure where fixtures, training, and marks are supplied to an operator who pays.
[ ] Trace the chain of title to first registration on any heritage asset, accounting for every period of non-use, since marks must transfer with goodwill and non-use with no intent to resume is abandonment under 15 U.S.C. § 1127.
[ ] Locate the archive separately from the marks, since it may have gone to a museum, a family, or a competitor.
[ ] Check for family or estate claims in the founder's name.
[ ] [Gate] No heritage asset is acquired or revived before the chain is traced and the archive located.

A note on order and on budget

The phases are ordered by how long the remedy takes rather than by urgency, which inverts the way this work is usually commissioned.

Every brand asks first about counterfeits, because counterfeits are visible, infuriating, and easy to describe to a board. Enforcement belongs in the programme and it is a treadmill rather than an asset: money spent this year buys nothing that survives into next year. It sits at Phase 10 for that reason, not because it does not matter.

The asset-building work sits early. The design grid and the secondary meaning file come first because they take years to produce and because the evidence disappears if it is not captured as it is created. A house that begins collecting advertising data by model this quarter will have a usable file in three years; one that begins when a copy appears will never have one at all.

Marking compliance sits at Phase 4 because it is externally triggered — a border detention, a regulator's review, a competitor's complaint — and because the remedy is fast once the problem is identified. Serialisation and the archive sit at Phase 5 because they are the cheapest permanent improvement available and because the archive is at continuous risk from people who do not know what it is.

The dealer network, resale, servicing, and authentication phases are policy work: each produces a document that will be quoted back to the brand, and each is far better written in advance than improvised under a dispute.

Split the budget explicitly between enforcement and evidence, and defend the split in those terms, or the urgent work will absorb the important work by default every year.

Licensing quality control, in practice

The obligation is easy to state and routinely unmet, and the gap between a clause and a programme is where cancellation arguments are born.

[ ] Confirm the licence reserves control over the nature and quality of the goods, which every template does.
[ ] Confirm that control is actually exercised, which most programmes do not. Exercise means samples inspected against a written standard, approvals recorded with dates and decision-makers, and a documented consequence when a sample fails.
[ ] Keep the records. A quality control programme with no file is indistinguishable from no programme when a challenger asks, and the challenger will ask by requesting the approval records for a specific season.
[ ] Approve advertising and packaging as well as product, since the licensee's presentation of the mark is part of what the licensor is required to control.
[ ] Inspect the licensee's own supply chain where the licensee subcontracts manufacture, since the goods bearing the mark are made by a party the licensor has never assessed.
[ ] Set a consequence ladder — remediation, suspension of a category, termination — and use the lower rungs, because a licensor that never enforces anything short of termination enforces nothing.
[ ] Handle run-off and unsold stock at termination, specifying a sell-off period, a quantity cap, and a destruction obligation for what remains.
[ ] Audit one licence properly each year rather than reviewing all of them superficially, since a real audit of one produces findings that improve the whole programme.

[ ] Check insurance cover for intellectual property claims, which general liability policies routinely exclude and which specialist cover addresses at a cost worth comparing against the enforcement budget.
[ ] Confirm any security interest description reaches the design portfolio and the archive, since a lender's package usually names the trademarks and stops there.
[ ] Record which agreements terminate or change on a change of control, since dealer, licence, and authentication arrangements frequently contain provisions the corporate team has never read.

Outcome. A house that has run this checklist can say which of its signature designs it could actually defend against an exact copy, whether its fineness and gemstone disclosures survive a regulator's review, where thirty years of serial records are kept and who is responsible for them, and whether two hundred dealers are using its marks under any control at all. Those four answers are worth more than the enforcement statistics the board asks about, and none of them appears in a counterfeit seizure report.

Key Authorities at a Glance

| Authority | What it settles | Phase | |---|---|---| | 35 U.S.C. § 171 | Design patents | 1 | | 35 U.S.C. § 289 | Total profit remedy for design patent infringement | 1 | | 35 U.S.C. § 112 | Written description and enablement | 3 | | Amgen Inc. v. Sanofi | Functional breadth must be enabled | 3 | | Wal-Mart Stores, Inc. v. Samara Brothers, Inc. | Product design trade dress always requires secondary meaning | 2 | | TrafFix Devices, Inc. v. Marketing Displays, Inc. | Functionality bar; expired utility patent as evidence | 1, 2 | | Two Pesos, Inc. v. Taco Cabana, Inc. | Trade dress protectable and can be inherently distinctive | 2 | | Star Athletica, L.L.C. v. Varsity Brands, Inc. | Separability of design features of useful articles | 2 | | Champion Spark Plug Co. v. Sanders | Reconditioned goods with adequate disclosure | 7 | | Aro Manufacturing Co. v. Convertible Top Replacement Co. | Repair permitted, reconstruction not | 8 | | Impression Products, Inc. v. Lexmark International, Inc. | Authorised sale exhausts the patent right | 8 | | 18 U.S.C. § 1839 | Reasonable measures element of trade secret status | 3, 8 | | Inwood Laboratories, Inc. v. Ives Laboratories, Inc. | Contributory liability standard | 10 | | 15 U.S.C. § 1114 | Infringement of a registered mark | 10 | | 15 U.S.C. § 1116 | Injunctive relief and ex parte seizure | 10 | | 15 U.S.C. § 1117 | Damages and statutory damages for counterfeiting | 10 | | 15 U.S.C. § 1125 | False designation of origin; false advertising | 4 | | 15 U.S.C. § 1064 | Cancellation, including for abandonment | 6, 10 | | 15 U.S.C. § 1127 | Definitions including abandonment and certification marks | 4, 10 | | 17 U.S.C. § 101 | Definitions including useful articles | 2 |

The five things people get wrong

One: treating design patents as the protection rather than the bridge. A fifteen-year term is short in a category where the object it protects will still be recognisable in fifty years. A brand that files design patents and does nothing else has protected the model during the period nobody wants to copy it and left it unprotected during the period everybody does. The bridge has to lead to trade dress, and trade dress needs a secondary meaning record built while the design patents are still in force.

Two: never collecting the evidence. Advertising spend by model, unsolicited press by design, sales by model, and look-for advertising. None of it can be reconstructed retroactively, all of it is generated continuously, and almost no house captures it in a form organised by design rather than by year. When the copy finally appears, the brand discovers that its most valuable asset is supported by a folder of press clippings and a feeling.

Three: letting compliance and brand protection run separately. Fineness marks, responsibility marks, origin marking, and gemstone disclosure land on the same physical objects as the trademarks, and they are managed by people who never meet. The result is a defect in one discovered by the people handling the other, usually at a border, usually at the worst time. One quarterly meeting fixes it.

Four: enforcing against every modifier. A modification business that accurately describes what it did and what it started with is making nominative use, and suing it produces a decision the brand then lives with in every future case. Enforcement belongs where there is non-disclosure, implied authorisation, or copying of protected design elements in replacement parts. The rest is answered by a published policy, a warranty position, and a service policy applied uniformly.

Five: managing the archive as a storage cost. Design files, drawings, advertising, press, and serial records are the evidence for every trade dress claim, every authentication, every revival, and every provenance dispute the house will ever have. They sit in a warehouse under a facilities budget, and the decision to cull them is made by someone with no idea what they are for. Give the archive an owner, a budget, and an index, and it becomes the most durable asset the business holds.