Counterfeiting is the manufacture, import, export, distribution, and sale of consumer goods that are not genuine but are branded to look identical to the authentic products, also known as “knock offs.” Counterfeiting also includes merely affixing the trademark or logo of a well-known consumer brand to a “knock off” product, even though it is not a direct copy. Counterfeiting is governed by the Lanham Act. Under the Lanham Act, the term “counterfeit” trademark means a “spurious mark which is identical with, or substantially indistinguishable from, a registered trademark.“ In the typical case of trademark counterfeiting, a product is made to imitate all facets of the genuine product, including its trademark, so that purchasers are deceived into buying what they believe is a genuinely branded good. Selling counterfeit products is prohibited by law and can result in both civil and criminal liability and penalties.
In counterfeiting cases, trademark owners may wish to seek an ex parte order, issued by a Court, for the seizure of the counterfeit goods. The Lanham Act expressly give the courts the power to grant this relief. These provisions, however, only apply to cases of trademark counterfeiting as defined by the Act. The statute authorizes the seizure of not only the counterfeit goods, but also the means of making the counterfeit goods or marks, and records documenting the manufacture, sale, or receipt of counterfeit goods or marks. In counterfeiting cases, a plaintiff is entitled to seek statutory damages as an alternative to actual damages or defendant’s profits. Under this section, the plaintiff may elect to seek statutory damages of not less than $500 or more than $100,000 per counterfeit mark.
In cases of willful infringement, the court has the discretion to award up to $1,000,000 per counterfeit mark.
Trademark owners face serious risk in failing to aggressively pursue counterfeiters. In the case of luxury brands, failure to take action against counterfeiters puts the brands at risk for erosion of the status symbol status of the goods.
It is important to hire an experienced Lanham Act litigator such as Erica W. Stump to analyze your case and determine whether you have a case for counterfeiting. The team at the law firm of Erica W. Stump, P.A. has experience litigating counterfeiting cases under the Lanham Act.