Trademark Counterfeiting

Where You Need a Lawyer:

(This may not be the same place you live)

At No Cost! 

 What Is Intellectual Property Law?

Intellectual property law is the legal system framework which provides certain privileges and protections for owners and inventors of certain intellectual property. Intellectual property laws are intended to encourage and protect new ideas, the creation of new technologies, as well as artistic creativity for the economic growth of the United States.

With the protections granted by intellectual property laws, an owner of a piece of intellectual property will have the confidence that their creative work and ideas can be protected.

The following is a list of different types of intellectual that fall under the umbrella of intellectual property law:

What Is a Trademark?

In legal terms, a trademark is any word, design, phrase, logo, or other symbol that is used to identify a product and/or the source of a product. Thus, a trademark is essentially a mark that creates an identity for a business. One of the main purposes of a trademark is usually used to distinguish one product and/or manufacturer from others. Trademarks can be owned by individuals, partners, or any legal entity, such as a corporation. Some of the most popular trademarks are recognized worldwide, such as the mouse ears, golden arches, apple, etc.

In order to qualify for the full amount of protections granted to trademark owners in the United States, trademarks must first be registered with the U.S Patent and Trademark Office (“USPTO”). Once the mark is registered, the trademark will be protected for an initial period of 10 years. It is important to note that the owner will be required to file updates during that period of time with the USPTO to show that the trademark is still in use. Not all trademarks can be registered with the USPTO.

In fact, in order to become registered with the USPTO, a trademark cannot:

  • Be identical or similar to an already existing trademark or related service/goods;
  • Be on the list of prohibited trademarks maintained by the USPTO or on the reserved list of trademarks maintained by the USPTO; or
  • Be overly descriptive to qualify for protection.

Once again, after a trademark is registered with the USPTO, the owner will be protected against other individuals or businesses who wish to copy or duplicate that trademark. Further, the entire United States will be considered to have been put on notice that the specific trademark has already been created and registered. This means that a future applicant would not be able to register the same trademark.

It is important to note that before registering a trademark, one should conduct a thorough search through the USPTO’s database in order to determine whether any other individual or entity is already using the same or similar trademark. It is especially important to not copy or utilize another’s registered trademark, as doing so could result in being sued under the theory of trademark infringement.

Trademark infringement is the illegal use of someone else’s trademark. There are several ways in which someone can be found liable for trademark infringement, but typically it is because someone is using the same or similar mark for commercial gain or causing damages to the original trademark owner. For example, if an individual or entity knowingly copies a company’s logo and uses that logo on their own items without the original owner’s consent to do so, that would result in that individual or entity being charged with trademark infringement.

What Is Trademark Counterfeiting?

In short, trademark counterfeiting is a type of trademark infringement wherein an individual or entity produces counterfeit goods that look exactly like the goods produced by the original trademark owner. These goods are commonly known as “knock-offs.” Trademark counterfeiting is an increasingly common form of trademark infringement. Trademark counterfeiters will typically steal the logo of a known trademark and company and put it on a fake product to then try and pass it off to a consumer as the original product.

Trademark counterfeiting is a very serious crime, since most consumers will assume that the known logo on the products indicates their source to be that of the actual trademark owner. However, the counterfeit products will often use inferior products and have inferior workmanship which results in both harm to the consumer, as well as harm to reputation of the actual trademark owner.

For example, if an individual buys a computer that bears an apple logo, but that computer is counterfeit and is lower quality than an actual apple computer, then the owner of the trademark will have their reputation and business goodwill harmed. Further, the consumer will be harmed as they purchased the product with the understanding that the actual manufacturer of the item was the company that owned the trademark.

What Are the Penalties for Trademark Infringement?

Intellectual property laws in the United States prescribe harsh penalties for intellectual property theft. Typically, intellectual property theft and infringement violations are charged as federal crimes, but they may also carry charges from the state in which the trademark is used or the infringement occurred. For instance, a consumer could bring a civil suit against an individual that sold them counterfeit goods with another’s trademark based on the legal theory of fraud.

Examples of potential legal consequences of trademark infringement and trademark counterfeiting include:

  • Criminal fines that are set by statute for each individual violation;
  • Imprisonment of one to up to several years. Typically, imprisonment is reserved for infringers that are using another’s mark to sell counterfeit goods;
  • Probation for up to 120 months;
  • An injunction letter that directs the party selling counterfeit goods or infringing on another’s trademark to cease and desist their use of the mark. Typically, an injunction letter or a cease and desist letter is the first legal action that an infringing party will face. The letter will demand the infringing party cease using the trademarked material, or face further criminal and civil penalties;
  • Loss or suspension of a business operating license, if the individual is found to be passing off their own goods as another company’s goods; and/or
  • Civil charges filed by the owner of the trademark or the consumers that were harmed by the infringement.

In order for a trademark owner to prevail in a civil case of trademark infringement against an infringing party, the trademark owner must prove the following legal elements to the court:

  1. The trademark owner must first prove they own a valid trademark;
  2. The trademark owner must then prove that the infringing party used the same or a similar trademark in commerce without their consent or license; and
  3. Finally, that the infringing party’s use of the trademark caused a “likelihood of confusion” to the consumer, and resulted in the trademark owner suffering monetary damages. One easy way of proving likelihood of confusion is having a consumer approach the actual trademark owner with a product complaint based on the counterfeit product.

Once the trademark owner proves all of the above elements, the infringing party will likely first receive an injunction to cease their use of the mark and close their business. Additionally, the infringing party will also be criminally fined for their illegal use of the trademark, including having to pay civil damages based on the amount of losses demonstrated by the trademark owner. If the prosecution proves that the defendant acted intentionally in violating the trademark, the court may also award punitive damages that exceed the amount of the monetary loss demonstrated by the trademark owner.

Do I Need A Lawyer For Help With Trademark Counterfeiting?

If you have any questions, concerns, or disputes associated with trademark counterfeiting, you should hire an experienced trademark attorney in your area.

An experienced attorney will be able to help you understand your legal rights and options according to both federal law and the laws of your specific state. An attorney will also be able to file a civil lawsuit against the infringing party on your behalf. Finally, an attorney will also be able to represent you in court, as needed.

Law Library Disclaimer


16 people have successfully posted their cases

Find a Lawyer