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Joseph Gioconda has spent the past 13 years counseling corporations on how to protect their brands and fight counterfeiters as a partner. Most recently he was the head of the trademark litigation and anti-counterfeiting practices in the New York office of DLA Piper, where he worked for three years. Prior to that, he was a partner at Kirkland & Ellis. Gioconda decided to start a boutique in New York focused specifically on anti-counterfeiting efforts. The Gioconda Law Group opened its doors Monday with eight workers, five of whom are attorneys. He sees a niche for a small firm that specializes in brand protection and can offer flexible fee structures. Gioconda said DLA Piper provided the opportunity to expand his practice and get exposure to international clients, but now was the right time to pursue his longtime goal of opening his own shop. The boutique firm will work with clients from several different industries, including fashion and luxury goods, software and video games, electronics and pharmaceuticals. The National Law Journal spoke with Gioconda about the new firm and counterfeiting issues. His answers have been edited for length. Q: Are we seeing more counterfeiting? A: Absolutely. It’s dramatically increased. When I started working in this area, counterfeiting was a problem that was generally considered to impact just the fashion and jewelry industries. The counterfeiters have become incredibly sophisticated and the underground economy has exploded. It now focuses on — literally — every industry. It’s everything from automobiles to cigarettes, pharmaceuticals, footwear, and the list goes on and on. Literally, every industry has been hit. Q: What’s the most effective way for a corporation to protect its brand? A: A corporation needs to look at all phases of brand protection. They can’t look at one thing in isolation. They have to look at customs, and ensure they’ve reported their marks with customs. They should look at their trademark portfolios. Are they training law enforcement to identify products and determine whether they are real or fake? Police aren’t necessarily going to know what’s real and what isn’t. Are they effectively utilizing outside counsel to aggressively pursue counterfeiting sources? Are they working with counsel to have a global strategy? Are they media messaging and informing customers about how to deal with fakes? Q: What industry has been hit with the biggest growth in counterfeiting recently? A: It’s grown across the board, but I would say that pharmaceuticals are facing a really big problem. And after that it’s the electronics industry, with cell phones, MP3 players and things like that. And they’ve become more sophisticated. It used to be, 10 or 15 years ago, you could spot a fake. Now the experts sometimes have a hard time telling a real from a fake. They have to take it apart. Q: Where do these counterfeit products end up? A: Sometimes they end up with consumers who have no idea they are fake. They can end up on the racks of discount stores, or they may end up in legitimate retailers where you wouldn’t expect them to be. Q: Are there any trends out there in the anti-counterfeiting world? A: I think companies across the board are starting to become more vigilant at the higher levels. It’s been seen as one of the smaller areas of interest in the legal department. Now it’s reached the level of the board of directors, who are asking whether or not enough is being done to stop it. The trend is to see this not just as a legal problem, but as a business threat. Q: Have you ever unknowingly bought counterfeit goods? A: The only counterfeit things I’ve bought were in the course of investigations. In all honesty, there have been a few times when I was given gifts by family and friends that they were later embarrassed to learn were counterfeits.

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