Trademark Counterfeiting Act of 1984 - Penalties Under The Act

Penalties Under The Act

"The Senate and House bills both aimed at accomplishing three primary changes in the law: First, creation of criminal penalties for intentionally dealing in materials that one knows to be counterfeit; second, authorization for mandatory or virtually mandatory awards of treble (sic) damages and attorneys fees in civil counterfeiting cases; and third, authorization for ex parte court orders for the seizure of counterfeit materials when it can be shown that the defendant would be likely to attempt to conceal or transfer the materials."

The Trademark Counterfeiting Act of 1984 made it illegal for anyone to intentionally traffic or attempt to traffic goods or services knowingly using a counterfeit mark, which is defined as "a spurious mark and spurious designations (1) used in connection with trafficking in goods or services (2) identical with, or substantially indistinguishable from, a mark registered for those goods and services on the United States Patent and Trademark Office’s Principal Register (whether or not the defendant knew the mark was registered) and in use and (3) the use of which is likely to deceive, confuse, or cause mistake on the part of the consuming public". These counterfeit goods include numerous things such as labels, stickers, wrappers, charms, cases, tags, and patches. Originally under the act, the penalty for being convicted for trademark counterfeiting was a fine up to $100,000 and a prison sentence of up to five years plus paying attorney fees to the trademark owners. These penalties were later amended and called for a fine of up to $2 million and/or imprisonment for up to 10 years, with large companies being fined up to $5 million. If charged more than once for trademark infringement, individuals can be fined up to $5 million and/or be imprisoned for up to 20 years while corporations may be fined up to $15 million. Counterfeiters of safety-sensitive products, such as pharmaceuticals, would get the maximum penalty set forward in the act.