Counterfeiting Claims and Remedies: Not Limited to Cases Involving "Stitch-for-Stitch" Copies

Recovering meaningful monetary awards in Lanham Act cases is challenging, even where a likelihood of confusion is proven. But, in cases of infringement that involve the use of a counterfeit mark, the Lanham Act provides for special remedies, including statutory damages or mandatory treble damages and attorneys' fees. Requests for these special remedies in a complaint can improve your clients' chances of obtaining an early and favorable settlement, assist in obtaining larger awards in cases of default, and increase monetary awards after trial. It is important, therefore, to know whether your case involves the use of a counterfeit mark.

In the paradigmatic example of counterfeiting, illicit sellers offer cheap knock-offs that attempt to copy "stitch-for-stitch" every aspect of a genuine good. Many district courts have found that the Lanham Act's special remedies for counterfeiting are available only in such cases. Indeed, until recently, McCarthy's treatise suggested this as well. To date, however, no appellate court has endorsed this approach. And, the plain language of the Lanham Act does not support this interpretation.

In fact, the Lanham Act's special remedies for counterfeiting are available in any case of infringement "involving" the use of a "counterfeit mark." A "counterfeit mark" is a mark that is identical, or substantially indistinguishable from, a registered mark and applied to the same type of goods as in the registration. Thus, the Lanham Act's special remedies for counterfeiting should be available in any case of infringement involving an identical mark, even if the goods to which it is applied, or their packaging, differ in appearance from the mark owner's goods.

The Ninth Circuit has recently suggested that this analysis is correct and the relevant section of McCarthy has recently been updated to reflect that the relevant issue is the similarity of the marks and not the similarity of the parties' products. The issue is presently before the Fifth Circuit Court of Appeals as well.

Listen as our authoritative panel of IP attorneys examines the special remedies available in cases involving counterfeit marks, discusses the relevant statutory language, reviews various district court cases and discusses how they fit, or do not fit, under the statutory language of the Lanham Act, as well as outlines current developments in this area. Finally, the panel will offer best practices for navigating the counterfeiting minefield.