Trademarks and branding are worth a lot of money to a company. The Fourth Circuit recently addressed the serious issue of trademark counterfeiting. This form of trademark infringement occurs when a company manufactures goods (or performs services) that are identical to those of the trademark owner, and then passes them off as the authentic goods (or services) of the trademark owner. This misleading behavior harms the public in general.
To address this serious crime, Congress enacted the Trademark Counterfeiting Act of 1984 (“Counterfeiting Act”). The Counterfeiting Act makes it a federal crime to violate the Lanham Act by the intentional use of a counterfeit trademark and/or the unauthorized use of a counterfeit trademark. Penalties under the Act include a prison sentence of up to five years and/or a $250,000 fine ($1,000,000 fine for a legal entity) for selling or even attempting to sell counterfeit goods or services. In addition to criminal penalties, the counterfeiter can be sued civilly by the owner of the trademark under the Lanham Act. Recovery under the Lanham Act can include lost profits, triple damages and attorney’s fees.
Last week, the Fourth Circuit upheld jury verdicts convicting counterfeiters of importing and selling counterfeit Burberry handbags and wallets. The well-known plaid pattern trademarks at issue are often referred to as the “Check” mark. Specifically, the judge stated that “[t]he plaid pattern displayed on appellants’ goods differs only slightly from the Burberry Check mark — in color and in the shape of the boxes formed by the stripes.” Accordingly, the marks on the counterfeit wallets and purses were close enough to Burberry’s trademark to support the jury verdict.
Handbags and wallets are goods that are often counterfeited both in the United States and abroad. What other products have you encountered that have counterfeit trademarks?