To prevent damage to your brand and your bottom line, preventive measures to stop counterfeit trademarks from entering the US market are often most effective. But what are your options if those false marks have already entered into commerce?
One remedy is to pursue criminal enforcement. As the trademark owner, you should report the crime to the appropriate state or federal law enforcement authorities. You can learn more about what exactly constitutes a counterfeit trademark here.
The National Intellectual Property Rights Coordinator Center (IPR Center), which is led by the US Immigration and Customs Enforcement (ICE) Homeland Security Investigations (HIS) collaborates with over 19 US government agencies, Interpol, Europol, and the governments of Canada and Mexico to provide a comprehensive response to IP theft. The IPR will coordinate an investigation by identifying, disrupting, prosecuting, and dismantling criminal organizations involved in the manufacture and distribution of counterfeit products. (See www.iprcenter.gov for more information.)
Here is a brief summary of what might happen during the process.
A victim or the trademark owner makes a report.
Trademark owners can fill out the Allegation of Counterfeiting and Intellectual Privacy on IPR Center website or email details to [email protected]. Trademark owners may also try reporting to their local office of the Federal Bureau of Investigations who works with the IPR Center.
The IPR Center investigates.
As part of their investigation, the IPR Center may seize the suspected counterfeit goods, as well as property, equipment, storage facilities, and vehicles associated with manufacturing and transporting the counterfeit goods.
As the trademark owner, you may be asked to provide evidence to prove your trademark rights, such as a Certificate of Registration from the USPTO, and that the goods are not authorized to bear your mark.
The IPR Center pursues charges.
If there is enough evidence to pursue the case, the IPR center can pursue charges against the manufacturer of the counterfeit goods as well as those who actively traffic the goods.
What happens to the Defendants in counterfeit trademark cases?
If convicted (either after trial or through a plea deal), the defendant can face criminal penalties (18 USC § 2320), such as:
- Up to 10 years’ imprisonment and a $2 million fine for individuals who are first-time offenders,
- A $5 million fine in the case of a corporation or entity that is a first-time offender,
- Up to 20 years’ imprisonment and a $5 million fine in the case of an individual who is a repeat offender, or
- A $15 million fine in the case of a corporation or entity that is a repeat offender.
If the acts of counterfeiting caused serious bodily injury, the government can seek enhanced penalties, which can include life imprisonment if the defendant knowingly or recklessly caused or attempted to cause death. Enhanced penalties can also be sought for cases that involve counterfeit drugs or military goods or services.
Victims are reimbursed, and goods are destroyed.
In addition to the above-mentioned penalties, counterfeiters are typically ordered to reimburse victims of the crime, which includes the trademark owners, and all counterfeit goods are destroyed or disposed of by law enforcement authorities after the defendants are convicted.
Other Remedies Available for Counterfeit Trademarks
Check back to read future installments of this blog series, where you can learn other ways to combat counterfeiting, including how to:
- prevent the creation of counterfeit goods,
- fight counterfeit sales happening on the internet,
- and obtain damages through civil litigation.
If you have been the victim of counterfeiting or need help obtaining a US trademark registration, I strongly urge you to seek the assistance of an experienced IP attorney. You can contact the Marks Gray intellectual property team at 904-807-2180.