341: How To Fight Back Against Chinese Counterfeits With Steven Weigler

Podcast: Download (Duration: 51:04 — 58.7MB)

The most effective way to stop a Chinese factory from copying your product is to register your trademark and copyright in China itself, which costs under $1,000 and lets you stop goods before they ever leave the country. China is a first-to-file jurisdiction, so a factory that intends to copy you can register your mark before you do.

In this episode I spoke with Steven Weigler, founder of Emerge Counsel and my own IP attorney. He was previously in-house counsel at AT&T, built and ran his own company for eight years, and now focuses on IP strategy for ecommerce sellers.

Below is the full framework: what each of the four IP tools actually protects, why patents rarely help Amazon sellers, why copyright is the most underrated option, and how enforcement in China actually works.

Key takeaways

• Register your IP in China for under $1,000, because stopping goods at the source beats fighting listings later.
• China is first-to-file. A factory that plans to copy you can register your trademark before you do.
• Patents run about $6,000 per application and Amazon largely ignores patent claims because they cannot evaluate them.
• Trademark is the must-have, and it is what Amazon Brand Registry runs on.
• Copyright costs around $65 for a collection and carries statutory damages up to $100,000 per incident.
• Writing the copyright symbol does nothing enforceable. You must register with the Copyright Office.
• Filing a trademark wrong can trigger a cease and desist against you, since companies monitor USPTO filings.
• Trade secrets need internal agreements. Coca-Cola never patented its formula because patents publish.

Why an IP strategy needs multiple protections

No single filing protects a product, which is why Steven treats IP as a set of threads woven together rather than one document.

His framing is a tree with four branches: patents, trademarks, copyrights, and trade secrets. Each covers something the others do not.

The practical version is a spreadsheet with a tab per branch, mapping what is protected by what. That is what turns individual filings into a defensible position.

Strategy has to come before filing. Without one, you either leave gaps or trip over problems that cost more to unwind than to avoid.

When patents make sense for an ecommerce product

Patents protect genuinely new inventions or significant improvements on existing ones, and most ecommerce products qualify as neither.

The novelty bar is high. Using dental floss as an example, you would need a fundamentally new way to floss teeth rather than a better version of the existing approach.

Timing is absolute. Once the product is public, patentability generally disappears, which is why the pre-launch moment is when this decision has to be made.

Cost runs around $6,000 per application, and a real strategy involves multiple patents rather than one. Steven is not a patent attorney and refers to specialists matched to the underlying science.

The exclusivity is genuinely valuable at 20 years, and it is worth nothing if you cannot afford enforcement.

Why Amazon rarely acts on patent infringement claims

Amazon evaluates products, and patents describe inventions in technical language that does not map cleanly onto a listing.

Steven’s example makes the mismatch clear. A patent might describe combining polyurethane and rubber and galvanizing them to produce a better shoehorn.

Amazon is looking at a physical good on a listing page. Proving that good infringes that description is a technical argument they are not equipped or inclined to evaluate.

Trademark claims work differently. Telling Amazon your brand is Adidas and your trade dress is three stripes is immediately legible to them.

Litigation is the alternative and it is brutal. Steven points at Apple versus Samsung as the illustration of how long and expensive patent disputes run.

Why trademark is the essential protection

Trademark protects how you present yourself to consumers, which is both the easiest thing to enforce and the basis of Amazon Brand Registry.

The protection covers more than the name. Trade dress protects the look and feel of the product itself, which is why the Adidas stripes are protectable.

For a Shopify store it extends further. The look and feel of the entire customer experience falls under the same umbrella.

Amazon has made the timing easier. A pilot program lets you get into Brand Registry immediately upon filing rather than waiting for the trademark to issue.

The risks of filing your own trademark

A badly filed trademark can trigger a cease and desist letter against you rather than protecting you.

Companies actively monitor USPTO filings. Steven’s own firm does this for clients, and larger companies do it at scale, so an infringing application creates a public record of your infringement.

The technical requirements are unforgiving. There are 45 classes, the first 35 for goods and the remainder for services, and filing in the wrong one makes the trademark worthless.

Description length matters in both directions. Claiming too much or too little real estate in your description both cause problems.

The common refusals are expensive. A descriptiveness refusal means your mark is too generic to protect, and a likelihood of confusion refusal is worse still.

The wrong-class failure is subtle. Filing to protect an online store as a service while leaving the goods unprotected lets someone else claim the goods mark.

Fixing a bad filing can mean rebranding entirely. Refiling is the good outcome, and relabeling everything is the bad one.

Why copyright is the most underrated IP protection

Copyright protects original works of art, costs around $65 for a collection of designs, and carries statutory damages up to $100,000 per incident.

The scope is broader than people assume. Product packaging, product descriptions, website copy, logos, and even source code all qualify when original.

Toblerone’s triangular packaging and the appearance of M&Ms are the kind of packaging originality that copyright covers.

The economics are why Steven favors it. Statutory damages mean an infringer faces a defined financial exposure, which makes a threat credible in a way trademark disputes often are not.

Collections keep it cheap. Five product designs can go into a single application rather than five separate filings.

Why writing the copyright symbol protects nothing

Copyright attaches automatically, and it is not enforceable in court until you register it with the US Copyright Office.

The symbol convention is the C, the year, and the owning entity. That notice exists and gives you no practical ability to act.

Steven’s assessment is blunt: he sees no real value in the notice alone.

The registration is what unlocks statutory damages, which is the entire reason the protection has teeth.

What counts as copyright infringement

A copy does not have to be exact, and there is no single clean test for how close is too close.

The standard is a multi-factor analysis, and the practical version is whether it looks like they copied original elements of your work.

Small modifications do not automatically clear infringement. Steven’s active case involves a large publisher placing a client’s artwork into the background of an animated cartoon, where nothing else resembles the original.

Music cases illustrate how far it stretches. Analysis of note progressions has supported successful infringement claims where the songs do not sound obviously alike.

How to protect trade secrets inside your company

Trade secrets cover the operational knowledge that makes you successful, and they require internal agreements to mean anything.

Coca-Cola is the canonical example. The formula was never patented specifically because patents publish, so secrecy was worth more than exclusivity.

For an ecommerce business the protected material is process knowledge. How you handle Amazon questions, how you reached the top of a category, how you price, and your MAP policy across channels.

The risk grows as you hire. The people you start a business with are frequently not the people you end it with, and the secret sauce spreads freely inside a company that has not defined it.

The requirement is documentation plus agreements. Map what your trade secrets actually are, and have employees and independent contractors sign accordingly.

Steven’s framing is the useful test: if you cannot protect this inside your own company, you have no chance of protecting it outside.

Why to register your IP in China

Registering trademarks and copyrights in China lets you stop counterfeit goods before they leave the country.

The economics of copying explain why it happens. A factory tooling up for your order has already inked the press, so producing extra units and selling them independently is nearly free margin.

Enforcement in China is genuinely effective. Steven’s experience is that Chinese authorities and Alibaba both act on registered Chinese IP, arguably more efficiently than the US system on copyright.

Cost is low. Under $1,000 covers the filings, particularly when the strategy work has already established the class, goods and services, and mark.

The mechanism he prefers is local counsel. International treaties like the Madrid Protocol and Berne Convention exist, and working directly with a Chinese firm produces better results.

Why the first-to-file rule makes timing critical

China awards rights to whoever files first, so a factory planning to copy you can register your own mark before you do.

That inverts the usual assumption. You can lose the ability to protect a product you designed because someone else filed on it in the manufacturing country.

The defense is filing before you send designs out. If you have a design and intend to sell it, registering ahead of manufacturing outreach is the protective move.

You do not need finished product. The filing can proceed from designs.

Why stopping counterfeits at the source is easier

Once counterfeit goods reach the US market, one infringing factory becomes many listings.

Steven’s analogy is water from a faucet. It travels in one direction until it hits the sink, then splatters everywhere.

That is what an Amazon counterfeit problem looks like. Rarely one listing, usually many, because sellers distributing the goods market them in different ways.

Stopping the shipment before it leaves is the alternative to cleaning up the whole bathroom.

How to identify and confront an overseas copycat

Finding the actual manufacturer is more tractable than most sellers assume.

There are several routes. Subpoenaing Amazon produces manufacturer names, and Chinese counsel can research customs records since the goods have to leave China.

Direct contact also works. Counsel can call the factory you work with and establish whether it is them or a related party, with notes returned in both Mandarin and English.

Enforcement is often a phone call. Chinese counsel contacts the infringer, sometimes visiting in person, and explains the legal exposure.

The deterrent is rational rather than dramatic. Facing actual resistance and possible litigation in their own jurisdiction, most factories move on to an easier target.

Frequently asked questions

How do you stop a Chinese factory from copying your product?

Register your trademark and copyright in China, which costs under $1,000. Chinese authorities and Alibaba both act on registered Chinese IP, which lets you stop goods before they ship rather than fighting listings after they arrive.

Is a patent worth it for an Amazon product?

Usually not. Applications run around $6,000 each, a real strategy needs several, and Amazon largely ignores patent claims because evaluating whether a physical good infringes a technical description is not something they do.

Why does Amazon act on trademark claims but not patents?

Trademark claims are immediately legible. Telling Amazon your brand is Adidas and your trade dress is three stripes is something they can verify by looking. A patent describes an invention in technical language that does not map onto a listing page.

What can you copyright for an ecommerce product?

Original product descriptions, product packaging, website copy, and source code. Logos are harder, since the Copyright Office may find common letterforms insufficiently original. A collection of designs can go in one application for around $65.

Does writing the copyright symbol protect you?

Not enforceably. Copyright attaches automatically, and you cannot act on it in court until you register with the US Copyright Office. Registration is what unlocks statutory damages up to $100,000 per incident.

Can filing your own trademark backfire?

Yes. Companies monitor USPTO filings, so an application that infringes an existing mark creates a public record and can produce a cease and desist letter. Filing in the wrong class among the 45 available makes the mark worthless.

What is a trade secret in an ecommerce business?

Operational knowledge that produces your results: how you handle Amazon questions, how you reached the top of a category, your pricing approach, and your MAP policy. Protecting it requires documenting what it is and having staff and contractors sign agreements.

When should you file IP protection in China?

Before you send designs to a manufacturer. China awards rights to whoever files first, so a factory intending to copy you can register your mark before you do, which leaves you without rights to a product you designed.