1. What Is Trademark Counterfeiting?
Trademark counterfeiting is a serious form of trademark infringement involving unauthorized use of a fake trademark that is identical with, or substantially indistinguishable from, a genuine registered trademark.
The Lanham Act defines a counterfeit as a spurious mark that is identical with, or substantially indistinguishable from, a registered mark.
For certain specialized counterfeiting remedies, including the civil ex parte seizure procedure under Section 1116(d), the counterfeit mark generally must involve a trademark registered on the USPTO Principal Register for the relevant goods or services and currently in use.
A counterfeit product therefore typically attempts to appear as though it is an authentic product originating from the legitimate trademark owner.
Examples can include fake cosmetics bearing an unauthorized reproduction of a registered brand logo, imitation apparel using copied labels, counterfeit electronics packaged under another company’s trademark, fake jewelry containing reproduced brand insignia, unauthorized branded packaging or hangtags, and counterfeit replacement parts presented as genuine manufacturer products.
The precise legal classification is important because federal law provides remedies specifically directed to qualifying counterfeit-mark activity.
2. What Is the Difference Between Counterfeiting and Trademark Infringement?
Counterfeiting is generally a narrower category of trademark infringement involving a fake mark that is identical with, or substantially indistinguishable from, a registered trademark.
Ordinary trademark infringement is broader.
Trademark infringement generally asks whether unauthorized use of a trademark is likely to cause consumer confusion, mistake, or deception regarding the source, sponsorship, affiliation, or approval of goods or services.
The competing trademarks do not need to be identical.
Counterfeiting, by contrast, generally involves a substantially exact imitation of the genuine registered mark.
For example, a competing mark such as VELORA+ used for goods related to those sold under VELORA could raise an ordinary likelihood-of-confusion issue.
Fake products displaying an essentially exact unauthorized copy of the registered VELORA trademark could present a counterfeiting issue.
The distinction can materially affect available remedies, damages, seizure procedures, and litigation strategy.
Learn About Trademark Infringement & Enforcement
3. What Is the Difference Between a Counterfeit and a Knockoff?
A counterfeit generally uses a fake version of another party’s registered trademark, while a knockoff may copy the appearance or design of a product without reproducing the trademark itself.
The term “knockoff” is commonly used in business discussions, but it is not synonymous with statutory trademark counterfeiting.
A knockoff may imitate a product’s shape, packaging, color arrangement, styling, design elements, overall appearance, or commercial concept while using a different brand name.
That conduct may still violate intellectual property rights.
Depending on the facts, the claim may involve trademark infringement, trade dress, copyright infringement, design patent infringement, false advertising, or unfair competition.
A fake product displaying the genuine brand’s registered trademark is therefore legally different from a product that imitates the brand’s design while displaying an unrelated mark.
Identifying exactly what has been copied is an important step in selecting the appropriate enforcement mechanism.
4. Are Unauthorized Resellers Selling Counterfeit Goods?
Not necessarily.
A seller offering genuine products without authorization from the trademark owner is not automatically selling counterfeit goods.
A marketplace listing may involve genuine authorized goods, genuine unauthorized goods, gray-market goods, materially different products, repackaged goods, used products, refurbished goods, counterfeit products, goods with altered serial numbers, or products bearing unauthorized reproductions of trademarks.
Each situation may require a different legal analysis.
The fact that a seller operates outside a manufacturer’s authorized dealer network does not, by itself, establish that the seller’s inventory is counterfeit.
Different issues can arise when genuine products have been materially altered, repackaged, stripped of warranties or services, or distributed in a manner that interferes with legitimate trademark quality controls.
Brands should therefore verify what is actually being sold before submitting a counterfeit complaint or filing litigation.
Accurately classifying the conduct can make an enforcement program more effective and reduce unnecessary disputes.
5. Why Is Federal Trademark Registration Important for Anti-Counterfeiting?
Federal trademark registration can provide important enforcement tools in counterfeiting matters, and several specialized remedies depend on the existence of a qualifying registration.
For the Lanham Act’s civil ex parte seizure procedure, the counterfeit mark generally must reproduce a trademark registered on the USPTO Principal Register for the relevant goods or services and currently in use.
Principal Register trademarks may also qualify for recordation with U.S. Customs and Border Protection.
CBP’s trademark recordation program generally requires a valid registration on the USPTO Principal Register. Supplemental Register trademarks are not eligible for CBP trademark recordation.
Federal registration can therefore strengthen a brand’s ability to pursue marketplace enforcement, federal counterfeiting litigation, border enforcement, statutory damages, and specialized seizure remedies.
This is one reason anti-counterfeiting planning should begin before counterfeit activity becomes widespread.
Businesses should consider registering the names, logos, labels, and other source identifiers that counterfeiters are most likely to copy.
Learn About Federal Trademark Registration
6. How Should Brands Monitor for Counterfeit Products?
Brands should monitor the places where customers actually encounter, evaluate, and purchase their products.
That may include online marketplaces, search engines, social media platforms, standalone websites, mobile applications, wholesale platforms, auction sites, retail stores, trade shows, distributor channels, and international marketplaces.
Monitoring should extend beyond exact-text searches for the registered trademark.
Counterfeiters may misspell trademarks, separate words differently, remove brand names from listing titles, show the trademark only in product photographs, use generic listing descriptions, create multiple storefronts, reuse photographs under different seller names, switch domains, or reopen under new identities after enforcement.
Effective monitoring may therefore involve recurring searches, image review, seller investigation, test purchases, comparison against authentic goods, and analysis of relationships among apparently separate accounts.
The goal is not merely to identify one infringing page.
A stronger brand-protection program attempts to determine whether multiple listings, sellers, domains, or storefronts are connected to the same operation or supply chain.
7. What Evidence Should Be Preserved Before Taking Action?
Evidence should generally be preserved before the suspected counterfeiter receives notice of the brand’s enforcement activity.
Online evidence can disappear quickly.
After receiving a complaint or demand, a seller may delete listings, change storefront names, remove photographs, alter contact information, move inventory, close accounts, open replacement accounts, or destroy relevant records.
Brands should therefore create a clear evidentiary record before enforcement begins.
Useful information may include dated screenshots, complete URLs, marketplace seller names, account identifiers, product photographs, packaging photographs, pricing, listing descriptions, customer reviews, claims of authenticity, visible sales counts, shipping origin information, return addresses, contact details, domain registration information, social media profiles, correspondence, and other lawfully available information concerning the seller.
A controlled test purchase can sometimes provide especially valuable evidence.
The purchased item can be compared with genuine merchandise for differences involving labels, serial numbers, materials, packaging, logos, manufacturing details, safety features, quality-control characteristics, shipping documents, and seller information.
Evidence preservation can become important not only for marketplace complaints but also for cease-and-desist demands, customs enforcement, settlement negotiations, and federal litigation.
8. Can Counterfeit Listings Be Removed From Online Marketplaces?
Often, yes.
Many online marketplaces operate intellectual property complaint systems through which trademark owners can report counterfeit or infringing listings.
Platform enforcement can be useful when the immediate goal is to remove a listing, disable a storefront, stop unauthorized use of a trademark, prevent further sales, escalate repeat offenders, or identify recurring seller activity.
Some marketplaces also offer brand-registration, authentication, serialization, or repeat-infringer programs.
The procedures and evidence requirements vary by platform and can change over time.
It is therefore important to identify the correct legal basis for each complaint.
A report involving counterfeit trademark goods is different from a complaint involving ordinary trademark infringement, copyright infringement, patent infringement, unauthorized resale, trade dress, misleading affiliation claims, or violations of a platform’s own policies.
Marketplace takedowns can provide relatively fast relief, but they may not solve the underlying problem when sellers repeatedly reopen, multiple accounts appear connected, or the business needs broader remedies such as discovery, damages, injunctive relief, seller identification, or seizure.
9. Does the DMCA Apply to Counterfeit Products?
Not simply because a product is counterfeit.
The Digital Millennium Copyright Act notice-and-takedown procedure under Section 512 addresses copyright infringement.
Counterfeit use of a trademark should generally be addressed through trademark or counterfeit enforcement procedures.
However, counterfeit sellers often copy additional brand materials such as product photography, advertising graphics, packaging artwork, illustrations, website images, written product descriptions, or videos.
Those materials may be protected by copyright.
A brand may therefore have separate trademark and copyright enforcement options arising from the same seller activity.
Trademark enforcement can address the unauthorized use of the brand name, logo, or other source identifier.
Copyright enforcement can separately address copied photographs, artwork, graphics, written content, or other protected creative material.
The legal bases should remain distinct.
Learn About Copyright Enforcement
10. Should a Brand Send a Cease-and-Desist Letter to a Counterfeiter?
Sometimes, but a cease-and-desist letter is not always the best first enforcement step.
A demand letter can require a seller to stop manufacturing or selling counterfeit goods, remove listings, stop using the trademark, identify suppliers, preserve records, provide inventory information, surrender infringing domain names, dispose of counterfeit materials where appropriate, and confirm compliance.
However, advance warning can sometimes create enforcement risks.
A sophisticated counterfeiter may respond to notice by moving inventory, transferring funds, destroying evidence, deleting seller accounts, replacing websites, closing businesses, or reopening under a different identity.
Federal counterfeiting law recognizes circumstances where advance notice may undermine enforcement. Section 1116(d) establishes a specialized procedure under which a federal court may authorize seizure without advance notice when stringent statutory requirements are satisfied.
The decision to send a cease-and-desist letter should therefore follow an assessment of the evidence, scale of the activity, seller identity, repeat conduct, risk of evidence destruction, urgency, available court remedies, and the brand’s commercial objective.
Learn About Trademark Cease-and-Desist Letters
11. Can U.S. Customs Stop Counterfeit Imports?
Yes, in qualifying circumstances.
U.S. Customs and Border Protection can play an important role in preventing counterfeit goods from entering the United States.
CBP may detain, seize, forfeit, and ultimately destroy qualifying imported merchandise bearing infringing trademarks or copyrights when the applicable registration and recordation requirements are satisfied.
For businesses facing counterfeit manufacturing outside the United States, border enforcement can add an important layer of protection.
Rather than waiting for counterfeit products to reach warehouses, distributors, marketplaces, retailers, or consumers, CBP may be able to intercept qualifying shipments at U.S. ports of entry.
Customs enforcement can therefore be particularly valuable for brands whose products are frequently counterfeited overseas.
12. What Is CBP Trademark Recordation?
CBP trademark recordation is a separate federal process through which qualifying trademark owners provide U.S. Customs and Border Protection with information that can assist border enforcement.
A trademark generally must be registered on the USPTO Principal Register before it can be recorded with CBP. Supplemental Register trademarks do not qualify for the trademark recordation program.
Through CBP’s e-Recordation system, a trademark owner can provide information about the registered mark, covered products, ownership, authorized manufacturers, authorized importers, and other details that may help customs officers identify suspicious merchandise.
Trademark registration with the USPTO and recordation with CBP are separate processes.
Obtaining a federal trademark registration does not automatically place the mark in CBP’s intellectual property recordation system.
After recordation, trademark owners can further support enforcement by providing product-identification information that helps officers distinguish genuine products from counterfeits.
Customs recordation should therefore be treated as part of an ongoing brand-protection strategy rather than simply a one-time filing.
Learn About Trademark Customs Recordation & Border Enforcement
13. Can a Brand Sue a Counterfeiter in Federal Court?
Yes, when the applicable statutory and jurisdictional requirements are satisfied.
A trademark owner may bring federal trademark infringement and counterfeiting claims against sellers using qualifying counterfeit marks.
Potential relief can include injunctions, defendant profits, actual damages, litigation costs, attorney’s fees where authorized, enhanced monetary remedies in qualifying intentional-counterfeiting cases, statutory damages, ex parte seizure in qualifying cases, and destruction or disposition of counterfeit goods.
Federal litigation may become appropriate when marketplace takedowns or demand letters do not adequately address the underlying counterfeiting operation.
For example, litigation may be considered where counterfeit sellers repeatedly reopen storefronts, multiple sellers appear connected, substantial inventory exists, the brand needs discovery, seller identities are hidden, damages are significant, an enforceable injunction is needed, counterfeit products create safety concerns, or the operation appears coordinated or large-scale.
The appropriate litigation strategy should remain proportionate to the evidence, business harm, and enforcement objective.
14. Can a Court Seize Counterfeit Products Without Advance Notice?
In qualifying cases, yes.
Section 1116(d) of the Lanham Act authorizes a federal court to issue an ex parte seizure order in certain civil cases involving counterfeit marks.
“Ex parte” means that the application may be considered without first notifying the accused counterfeiter.
This is an extraordinary remedy and is subject to strict statutory requirements.
Among other matters, the court must be satisfied that other relief would be inadequate, the applicant has not publicized the requested seizure, the applicant is likely to succeed in showing use of a counterfeit mark, immediate and irreparable injury will occur without seizure, the property is located at an identified place, and the accused party would likely move, hide, destroy, or otherwise make the materials inaccessible if given advance notice.
The applicant must also provide security to address potential damages resulting from a wrongful seizure.
An ex parte seizure order is therefore very different from an online marketplace takedown.
A marketplace complaint invokes a platform’s internal enforcement procedure.
An ex parte seizure is a federal court remedy governed by specific statutory safeguards.
15. What Damages Are Available in Trademark Counterfeiting Cases?
Trademark counterfeiting cases can involve ordinary Lanham Act monetary remedies as well as specialized remedies applicable to qualifying counterfeit-mark violations.
Section 1117(a) permits qualifying plaintiffs, subject to statutory requirements and equitable principles, to seek the defendant’s profits, damages sustained by the plaintiff, and costs of the action.
Attorney’s fees may also be available in exceptional cases.
Counterfeiting cases can trigger additional remedies.
In qualifying cases involving intentional use of a counterfeit mark with the required knowledge, Section 1117(b) generally provides for enhanced monetary recovery unless extenuating circumstances exist.
The amount and form of recovery depend on the claims, evidence, defendant’s conduct, financial records, and applicable statutory requirements.
A brand should not assume that identifying a counterfeit product automatically produces a particular damages award.
16. What Are Statutory Damages for Trademark Counterfeiting?
Federal trademark law allows a plaintiff in a qualifying counterfeit-mark case to elect statutory damages instead of proving actual damages and the defendant’s profits.
Section 1117(c) currently permits an award ranging from $1,000 to $200,000 per counterfeit mark per type of goods or services.
If the court finds willful use of the counterfeit mark, the statutory maximum can reach $2,000,000 per counterfeit mark per type of goods or services.
These figures are statutory ranges, not automatic awards.
The court determines an appropriate amount based on the circumstances of the case.
Statutory damages can be particularly important where counterfeit sellers conceal their sales, fail to maintain reliable financial records, default in litigation, operate temporary online storefronts, or otherwise make actual damages and profits difficult to calculate.
This is one reason accurately distinguishing statutory counterfeiting from ordinary trademark infringement can materially affect litigation strategy.
17. Can Counterfeiting Lead to Criminal Prosecution?
Yes.
Trademark counterfeiting can be both a civil intellectual property violation and, in qualifying circumstances, a federal crime.
18 U.S.C. § 2320 criminalizes specified conduct involving intentional trafficking and knowing use of counterfeit marks.
Federal criminal liability has requirements separate from a private civil trademark action.
Criminal penalties can include substantial fines and imprisonment, with different penalties applying depending on the offense, prior violations, and certain specialized categories of counterfeit goods.
A private trademark owner does not prosecute the criminal case.
Criminal investigations and prosecutions are handled by government authorities.
A brand and its counsel can instead assist by preserving evidence, organizing documentation, identifying trademark registrations, preparing information concerning counterfeit activity, reporting suspected criminal conduct where appropriate, and cooperating with law-enforcement agencies or prosecutors.
The decision whether to investigate or bring criminal charges belongs to the relevant government authorities.
18. What Is Schedule A Counterfeit Litigation?
Schedule A litigation generally refers to federal lawsuits in which a brand owner brings claims against multiple online sellers, often identified through a schedule attached to the complaint.
These cases frequently involve marketplace storefronts, temporary websites, aliases, incomplete seller identities, overseas accounts, or groups of sellers accused of distributing counterfeit products.
A Schedule A case can potentially allow a brand to pursue relief involving multiple defendants through one litigation structure, subject to jurisdiction, joinder, service, due-process requirements, and the evidence connecting the defendants.
Possible objectives may include stopping infringing listings, identifying sellers, obtaining injunctions, preserving evidence, addressing related accounts, seeking monetary relief, restraining assets where legally authorized, and obtaining information from platforms or payment providers.
Schedule A litigation is not automatically appropriate for every online counterfeiting dispute.
The strength of the evidence, connection among defendants, jurisdiction, service issues, available remedies, and the brand’s actual enforcement objective should all be considered.
In some circumstances, a smaller and more focused case supported by stronger evidence may be more effective than attempting to sue every seller appearing in marketplace search results.
Learn About Schedule A Litigation
19. How Can Businesses Build a Long-Term Anti-Counterfeiting Program?
A strong anti-counterfeiting program begins before the first counterfeit product appears.
Protect the Core Brand
Businesses should register the names, logos, labels, and other source identifiers that counterfeiters are most likely to reproduce.
Trademark coverage should evolve as the company expands into new products and services.
Protect Related Intellectual Property
Counterfeit activity may involve more than trademark rights.
Depending on the product and business, copyright, trade dress, design patents, utility patents, and other intellectual property rights may protect packaging, product designs, photographs, artwork, software, advertising content, or technical features.
Record Qualifying Trademarks With CBP
Brands exposed to imported counterfeits should consider recording qualifying Principal Register trademarks with U.S. Customs and Border Protection.
Monitor Relevant Sales Channels
Monitoring should focus on the marketplaces, social networks, websites, wholesale channels, search results, and distribution networks where customers actually encounter the brand.
Preserve Evidence Before Enforcement
Businesses should establish an internal process for documenting suspicious listings, sellers, websites, products, and communications before takedowns or demands occur.
Create an Enforcement Escalation System
Not every violation requires litigation.
Depending on the circumstances, an enforcement program may move through monitoring, marketplace complaints, cease-and-desist demands, customs enforcement, seller investigation, federal litigation, or government referral where appropriate.
Track Repeat Sellers and Related Accounts
Counterfeit enforcement becomes more effective when apparently separate sellers can be connected through storefront information, shipping details, product images, payment data, domains, suppliers, or other evidence.
Train Internal Teams
Marketing, customer service, sales, e-commerce, distribution, and other internal teams may be among the first people to encounter counterfeit products.
Employees should know how and where suspected violations should be documented and reported.
Maintain Appropriate Registration Coverage
A trademark registration covering one product category may not provide the same enforcement position when a brand expands into different goods.
Trademark and intellectual property portfolios should therefore develop alongside the business.
Anti-counterfeiting is not simply a series of takedown notices or lawsuits.
For businesses facing persistent counterfeit activity, it should operate as an ongoing intellectual property risk-management program.
20. How Can Cohn Legal Help With Anti-Counterfeiting?
Cohn Legal, PLLC assists consumer brands, startups, product companies, e-commerce businesses, and other trademark owners with counterfeiting and online brand enforcement.
An anti-counterfeiting matter can begin with identifying exactly what rights the business owns and what conduct is occurring.
That analysis may include determining which trademarks are federally registered, whether the registrations are on the Principal Register, what products are being sold, whether the goods are actually counterfeit, where sellers are located, whether the goods are imported, which marketplaces are involved, whether multiple sellers appear connected, what evidence is available, and whether copyrighted material or other intellectual property has also been copied.
The appropriate enforcement strategy also depends on the business’s immediate objective.
Some matters call for rapid removal of listings.
Others may require seller identification, evidence preservation, customs enforcement, cease-and-desist demands, federal litigation, seizure remedies, monetary recovery, or broader deterrence.
Cohn Legal can assist with trademark registration strategy, counterfeit-product analysis, marketplace enforcement, evidence-preservation planning, test purchases, cease-and-desist demands, trademark infringement claims, federal counterfeiting litigation, statutory-damages analysis, ex parte seizure strategy where appropriate, Schedule A litigation, CBP recordation, customs enforcement coordination, copyright takedowns where separate copyright infringement exists, domain-name enforcement, coordination with investigators or foreign counsel, and cooperation with government authorities where potentially criminal conduct warrants referral.
The objective is not simply to remove today’s counterfeit listing.
For brands with recurring counterfeit problems, the goal is to build an enforcement framework that makes counterfeit distribution more difficult, identifies repeat actors, strengthens the company’s intellectual property position, and directs resources toward the violations causing the greatest commercial harm.
Discuss an Anti-Counterfeiting Matter
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FAQ
Anti-Counterfeiting Frequently Asked Questions
Is every fake or imitation product legally a counterfeit?
No.
A product may imitate another company’s design, packaging, style, or appearance without reproducing a qualifying registered trademark.
That conduct may raise claims involving ordinary trademark infringement, trade dress, copyright, design patents, or unfair competition without satisfying the legal definition of trademark counterfeiting.
Does a counterfeit mark have to be completely identical?
Not necessarily.
Federal trademark law uses the standard “identical with, or substantially indistinguishable from” the registered trademark.
Minor changes therefore do not necessarily prevent a mark from being treated as counterfeit.
Is an unauthorized reseller automatically a counterfeiter?
No.
Selling genuine products without the brand owner’s permission does not automatically make the products counterfeit.
The authenticity and condition of the goods, material differences, quality-control issues, warranties, packaging, and other circumstances may need to be evaluated separately.
Do I need a registered trademark to use the Lanham Act’s specialized counterfeiting remedies?
The Lanham Act’s specialized civil counterfeiting remedies generally depend on a qualifying trademark registered on the USPTO Principal Register for the relevant goods or services and in use.
Trademark rights and ordinary infringement claims may exist in additional circumstances, including for certain unregistered marks.
Does a Supplemental Register trademark qualify for CBP recordation?
No.
CBP generally requires a trademark to be registered on the USPTO Principal Register before it can be recorded through the agency’s trademark recordation program.
Does registering my trademark with the USPTO automatically protect it through Customs?
No.
USPTO trademark registration and CBP trademark recordation are separate federal processes.
A qualifying trademark owner that wants CBP border enforcement generally must separately record the registration with Customs.
Can Amazon, Etsy, eBay, and other marketplaces remove counterfeit products?
Many online marketplaces maintain intellectual property reporting systems that may be used to report counterfeit or infringing goods.
The requirements differ by platform and can change over time.
A complaint should accurately identify the relevant intellectual property right and type of violation.
Is a marketplace takedown the same as winning a counterfeiting lawsuit?
No.
A marketplace takedown is an action taken under a private platform’s policies.
Federal litigation can potentially provide judicial remedies such as injunctions, discovery, damages, statutory damages, and qualifying seizure orders.
Can I use a DMCA notice against counterfeit goods?
Not simply because the products are counterfeit.
The DMCA notice-and-takedown process addresses copyright infringement.
If a counterfeit seller also copies protected photographs, artwork, graphics, videos, packaging content, or written material, separate copyright enforcement may be available.
Should I buy a suspected counterfeit product as evidence?
A controlled test purchase can sometimes provide valuable information regarding authenticity, packaging, shipping origin, seller identity, product quality, serial numbers, labels, and other differences between genuine and suspected counterfeit goods.
Whether a test purchase is appropriate depends on the enforcement strategy and circumstances.
Should I preserve screenshots before reporting a counterfeit seller?
Yes.
Listings, seller information, prices, photographs, and storefronts can disappear or change once enforcement begins.
Preserving dated screenshots, complete URLs, account information, photographs, pricing, and related evidence before filing a complaint can be important.
Should I send a cease-and-desist letter before suing?
Not necessarily.
A demand letter can be useful, but advance warning may create risks if the seller can quickly remove evidence, relocate inventory, close accounts, transfer assets, or reopen under a different identity.
Serious counterfeiting matters should therefore be evaluated before notice is provided.
Can a federal court seize counterfeit products without notifying the seller first?
Potentially.
Section 1116(d) authorizes ex parte seizure orders in qualifying counterfeit-mark cases when strict statutory requirements are satisfied.
The remedy is extraordinary and is not automatically available merely because counterfeit goods are alleged.
Can U.S. Customs seize counterfeit products made overseas?
Yes, in qualifying circumstances.
CBP enforcement can address infringing merchandise seeking entry into the United States even when the goods were manufactured outside the country.
Recording qualifying intellectual property with CBP can strengthen border-enforcement efforts.
Can I recover the counterfeiter’s profits?
Potentially.
Federal trademark law permits recovery of defendant profits in qualifying Lanham Act cases, subject to statutory requirements and equitable principles.
Can I recover statutory damages instead of proving actual losses?
In a qualifying trademark counterfeiting case, yes.
A plaintiff may elect statutory damages ranging from $1,000 to $200,000 per counterfeit mark per type of goods or services.
For willful use, the maximum may reach $2 million per counterfeit mark per type of goods or services.
The court determines the appropriate amount within the statutory limits.
Can damages be increased for intentional counterfeiting?
Potentially.
Federal law provides enhanced monetary remedies in certain qualifying cases involving intentional use of counterfeit marks with the required knowledge.
The availability of enhanced relief depends on the statutory requirements and facts of the case.
Can selling counterfeit goods be a crime?
Yes.
Federal criminal law prohibits certain intentional trafficking involving knowing use of counterfeit marks.
Criminal prosecution is handled by government authorities rather than by the private trademark owner.
Can a trademark owner ask law enforcement to investigate counterfeit activity?
A trademark owner or its counsel may preserve and organize evidence, report suspected criminal counterfeiting to appropriate authorities, and cooperate with investigators or prosecutors.
The government decides whether to open an investigation or pursue criminal charges.
What is Schedule A litigation?
Schedule A litigation generally refers to federal cases brought against multiple online sellers, frequently identified in a schedule attached to the complaint.
These cases are often used in online counterfeiting matters involving numerous sellers whose identities may initially be incomplete or difficult to verify.
Whether this approach is appropriate depends on the evidence, relationships among the defendants, jurisdiction, joinder, service requirements, and the relief sought.
Does Schedule A litigation automatically freeze seller funds?
No.
Asset restraints and related relief depend on the legal claims, evidence, jurisdiction, requested remedy, and the specific court order.
An asset restraint is not an automatic consequence of filing a Schedule A case.
Can copyrights and design patents also help fight counterfeiters?
Potentially.
Copyright can provide additional protection when counterfeit sellers copy original product photographs, graphics, artwork, videos, written content, or packaging artwork.
Design patents may provide a separate claim where the accused product copies a patented ornamental design.
These rights are legally distinct from the trademark counterfeiting claim but can form part of a broader enforcement strategy.
Can counterfeit packaging, labels, or hangtags create liability?
Potentially.
Unauthorized packaging, labels, hangtags, boxes, wrappers, stickers, and other materials can implicate trademark, copyright, trade dress, design patent, or counterfeiting law depending on the rights involved and how the materials are used.
Can counterfeiting ever be stopped permanently?
No enforcement method can guarantee that counterfeit activity will never recur.
For brands facing persistent counterfeiting, the more practical objective is to reduce availability, increase enforcement risk, identify repeat sellers, protect distribution channels, intercept imported goods where possible, and respond quickly when new violations appear.
Build an Anti-Counterfeiting Strategy Before Fake Products Become Entrenched
Successful anti-counterfeiting requires more than submitting takedown requests whenever a suspicious product appears online.
Brands should maintain appropriate federal trademark registrations, monitor relevant marketplaces and sales channels, preserve evidence, distinguish true counterfeits from ordinary infringement and unauthorized resale, investigate repeat sellers, consider Customs recordation for imported goods, and escalate serious matters when administrative enforcement is not enough.
Federal trademark law provides substantial remedies for qualifying counterfeiting, including injunctions, damages, statutory damages, enhanced remedies, and, in narrowly defined circumstances, ex parte seizure.
Customs enforcement and criminal law can provide additional mechanisms where the applicable requirements are satisfied.
Cohn Legal assists businesses with trademark registration, counterfeit analysis, online marketplace enforcement, cease-and-desist strategy, CBP recordation, federal trademark disputes, Schedule A matters, and broader anti-counterfeiting programs.
