Anti-counterfeiting 2016 – A Global Guide (USA Chapter)

Legal framework

Civil counterfeiting enforcement primarily falls under the Lanham Act (15 USC Section 1051), while criminal counterfeiting enforcement primarily falls under 18 USC Section 2320. Although many states have their own laws imposing civil and criminal penalties for counterfeiting, most anti-counterfeiting actions in the United States apply federal law.

A rights holder must register its trademark before it can take advantage of federal anti-counterfeiting laws. These laws define a ‘counterfeit mark’ as "a spurious mark which is identical to, or substantially indistinguishable from, a registered mark". A mark which is merely confusing may not qualify as a counterfeit mark; a counterfeit mark must be "substantially indistinguishable" from the registered mark.

In a civil anti-counterfeiting matter, the rights holder may pursue a seizure order, temporary restraining order and preliminary injunction at the beginning of the case. It may also seek an order freezing the counterfeiter’s assets, as well as an order granting expedited discovery into the counterfeiter’s business and operations. At the conclusion of the case, the rights holder may elect actual damages or statutory damages, a permanent injunction and attorneys’ fees. The minimum statutory damages are $1,000 per mark per type of goods. The maximum statutory damages are $200,000 per mark per type of goods for non-wilful counterfeiting and $2 million per mark per type of goods for wilful counterfeiting.

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