The US anti-counterfeiting regime is built ontwo separate federal statutes: the Lanham Act (15 USC § 1051) and the Trademark Counterfeiting Act 1984 (18 USC § 2320). The Lanham Act addresses the establishment of trademark rights as well as civil anticounterfeiting enforcement. The Trademark Counterfeiting Act makes violating the Lanham Act’s anti-counterfeiting provisions a federal criminal offence. Although other state and federal laws address counterfeiting, nearly all US enforcement stems from these two statutes.
Under Section 45 (15 USC § 1127) of the Lanham Act, a counterfeit mark is defined as a “spurious mark which is identical to or substantially indistinguishable from a registered mark”. Thus, registration of a trademark with the US Patent and Trademark Office is a prerequisite to making a successful counterfeiting claim under US law. Liability for counterfeiting requires a higher degree of copying than mere trademark infringement. While counterfeiting requires the accused trademark to be “identical or indistinguishable” from another’s registered trademark, trademark infringement liability requires only:
- a colourable imitation of a registered mark that is “likely to cause confusion, or to cause mistake, or to deceive”; or
- in the case of an unregistered mark, the use of a name, symbol, term or device that is “likely to cause confusion, or to cause mistake, or to deceive” (15 USC §§ 1114, 1125(a)).
Counterfeiting is subject to higher civil damages, and certain types of emergency relief, that do not apply to regular trademark infringement. Further, criminal enforcement and border measures are available only to combat counterfeit marks.