Is your business selling products on the Internet or in a retail store? Did your business take the necessary precautions to protect your trademarks from infringement or prevent the distribution of counterfeit goods?
Counterfeiting and trademark infringement are somewhat similar violations of the law, though the remedies available to the trademark owner differ greatly. So, if someone is using your trademark in commerce, you may wonder if their actions qualify as counterfeiting or just trademark infringement.
The answer depends on how much of your trademark was copied. Counterfeiting involves a higher degree of copying than trademark infringement.
Trademark infringement requires:
- “Without the consent of the registrant, use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive” (15 USC § 1114) or
- For unregistered marks, the use in commerce of “any word, term, name, symbol, or device . . . which is “likely to cause confusion or to cause mistake or to deceive.” (15 U.S.C. §1125)
- a spurious mark which is “identical or indistinguishable from a registered mark”. (15 USC § 1127)
One word is particularly important in the definition of counterfeiting: registered.
In order to make a successful counterfeiting claim, the trademark must first be registered with the US Patent and Trademark Office (USPTO).
Remedies Available for Counterfeiting
United States law takes the problem of counterfeiting seriously. Almost all enforcement is based on two federal statutes that address the issue: the Lanham Act (15 USC § 1051) and the Trademark Counterfeiting Act of 1984 (18 USC § 2320).
The Lanham Act covers the creation of trademark rights and the enforcement of civil anti-counterfeiting. The Trademark Counterfeiting Act makes a violation of the anti-counterfeiting provisions in the Lanham Act a federal criminal offense.
Counterfeiting cases can result in higher civil damages than trademark infringement.
Also, counterfeiting cases are subject to types of emergency relief, criminal enforcement, and border measures that are not available in trademark infringement cases.
In upcoming blog posts, I will cover the various ways that owners of registered trademarks can combat counterfeiting, including how to:
- prevent the creation of counterfeit goods,
- stop foreign-made counterfeit goods from entering the United States,
- fight counterfeit sales happening on the internet,
- pursue criminal enforcement,
- and obtain damages through civil litigation.
Counterfeit products do more than just cost you sales; they can also negatively impact your brand’s reputation. Taking steps to protect your trademark from counterfeiting can protect your bottom line and the longevity of your company.