The Trademark Counterfeiting Act

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The Trademark Counterfeiting Act

In the United States, trademarks, service marks, certification marks, and collective marks are protected not only under civil law pursuant to the Lanham Act, but also under criminal law pursuant to the Trademark Counterfeiting Act, 18 U.S.C. § 2320.[1]  Section 2320 sets forth a criminal statute against trafficking in counterfeit goods.

§ 2320 encourages businesses to control the quality of their goods and services and invest in their brands.[2] § 2320 also encourages consumers to rely on the marks of business brands by penalizing those who attempt to mislead consumers into purchasing counterfeit goods or services, particularly those that may involve health or safety risks.[3]

For a more in-depth look, see our resource entitled, Battling the Counterfeiters: White-Collar Intellectual Property Enforcement.

The Trademark Counterfeiting Act

In order to establish a criminal offense under § 2320, the government must prove several elements:

    1. That the defendant intentionally trafficked, attempted, or conspired to traffic in goods, services, labels, patches, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hangtags, documentation, or packaging;
    2. That the defendant knowingly used or applied a counterfeit mark, which is likely to cause mistake, confusion, or deception; and
    3. That the mark is a counterfeit mark pursuant to § 2320(f).[4]

It is a felony to sell even one counterfeit good or service, and there is no related misdemeanor provision.[5]  Moreover, § 2320 is a general intent crime.[6]

When drafting § 2320, Congress relied heavily on the “concepts and definitions of the Lanham Act.”[7] For this reason, courts often refer to civil opinions under the Lanham Act when analyzing criminal cases under § 2320, even though the latter is often construed more narrowly.[8]

Remedies for a Trademark Counterfeiting Act Violation

For first offenses, the maximum penalty is up to $2 million in fines and ten years’ imprisonment for an individual and up to $5 million in fines for an organization.[9] For subsequent offenses, the maximum penalty is nearly doubled, if not tripled.[10]

Enhanced penalties are applicable in cases involving knowing or reckless cause or attempts to cause serious bodily harm or death, counterfeit military goods or services, or counterfeit drugs.[11] Restitution may also be available, but mark holders must use the ® symbol, or the words, “Registered in U.S. Patent and Trademark Office” or “Re. U.S. Pat. & Tm. Off.,” to give the public notice of their proper registration, or risk losing lost profits and other damages.[12]

Possible Defenses to a Trademark Counterfeiting Act Violation

§ 2320 has no specified statute of limitations period, so it is subject to the general five-year limitations period for all non-capital federal crimes not expressly provided for by law. [13]

The purpose of the statute is to give businesses the “right to control the quality of the goods manufactured and sold” through the use of a registered mark.[14]  Thus, the government maintains that it is not a defense under § 2320 that the counterfeit good is of too low or high quality to cause any mistake, confusion, or deception among consumers.[15]

 

Other Common Charges

Federal prosecutors often combine other charges when prosecuting 18 U.S.C. § 2320, such as:

 

[1] Office of Legal Educ. Exec. Off. of U.S. Att’ys., Prosecuting Intellectual Property Crimes 289 (4th ed. 2013).

[2] Id. at 90.

[3] Id. at 93.

[4] The Trademark Counterfeiting Act, 18 U.S.C. § 2320.

[5] See United States v. Foote, 413 F.3d 1240, 1246 (10th Cir. 2005).

[6] See United States v. Baker, 807 F.2d 427, 429 (5th Cir. 1986); see also United States v. Gantos, 817 F.2d 41, 42-43 (8th Cir. 1987).

[7] See H.R. Rep. No. 98-977, at 4-5 (1984); see also Joint Statement on Trademark Counterfeiting Legislation, 130 Cong. Rec. 31, 675 (1984).

[8] See United States v. Torkington, 812 F.2d 1347, 1352 (11th Cir. 1987); see also United States v. Giles, 213 F.3d 1247, 1249-50 (10th Cir. 2000).

[9] 18 U.S.C. § 2320(b).

[10] Id.

[11] The National Defense Authorization Act (NDAA) for Fiscal Year 2012, Pub. L. No. 112-81, 125 Stat. 1298 (2011), H.R. 1540, S. 1867; The Food and Drug Administration Safety and Innovation Act (FDASIA), Pub. L. No. 112-144, 126 Stat. 993, S. 3197.

[12] 18 U.S.C. § 2320(f).

[13] The Trademark Counterfeiting Act, 18 U.S.C. § 2320; 18 U.S.C. § 3282(a).

[14] Id.

[15] See United States v. Farmer, 370 F.3d 435 (4th Cir. 2004); see also United States v. Gonzalez, 630 F. Supp. 894, 896 (S.D. Fla.1986).