Key Takeaways

  • Criminal trademark infringement can result in substantial fines, imprisonment, or both—especially in cases of willful counterfeiting.
  • Civil penalties may include injunctions, actual and statutory damages, and the recovery of profits and attorney’s fees.
  • Federal agencies like the FBI, U.S. Customs and Border Protection, and the National IPR Center can assist in enforcement.
  • Willful infringement and repeat offenses often lead to enhanced criminal consequences.
  • Defenses and mitigation strategies may reduce liability in trademark infringement cases.

Criminal Trademark Infringement — What Is It?

Criminal trademark infringement is the unauthorized and illegal use of someone else's trademark to create confusion between the original and another mark. Businesses spend a great deal of time, energy, and money on the trademarks that represent their brand. Specific laws related to trademark infringement help protect that investment. These laws also help protect consumers from deliberate brand confusion created by illegal trademark use.

Types of Trademark Infringement and Their Consequences

Trademark infringement can be civil or criminal depending on the intent and severity of the violation. While civil cases typically involve unauthorized use that causes consumer confusion, criminal trademark infringement involves willful counterfeiting or fraudulent intent.

Civil penalties often include:

  • Injunctions to stop the infringing activity
  • Monetary damages, including the plaintiff’s actual damages or the defendant’s profits
  • Statutory damages (up to $2 million per counterfeit mark per type of goods/services in willful cases)
  • Attorney’s fees in exceptional cases

Criminal penalties may apply if the infringer knowingly traffics in counterfeit goods or services. These can include:

  • Fines up to $2 million for individuals or $5 million for corporations (first offense)
  • Up to 10 years in prison for individuals and 20 years for repeat offenders
  • Forfeiture of counterfeit goods and equipment used in production

What Can I Do if Someone Is Infringing on My Trademark?

If your trademark is being used in a way you did not authorize, you can take steps to stop it with the help of a competent attorney.

  1. The usual first course of action is to consult with an attorney experienced in trademark law who can draft a cease and desist letter. That document lays out for the violator what they are doing that is illegal, why it is illegal, and what the potential consequences may be if the violations continue to happen.
  2. Sometimes the cease and desist letter is enough. The violator may have been unaware of the conflict and may stop using the mark once they are informed. However, if the violator continues to impede on your trademark, then your attorney can file a legal document with a court of appropriate jurisdiction to ask the judge to issue an injunction. An injunction is a court order to the violator. This document orders the violator to stop using the protected trademark or risk penalties.

Some courts may also award damages and attorney fees at the same time the injunction is issued if they find the violations were blatantly intentional or especially egregious.

Defenses Against Trademark Infringement Accusations

If you are accused of trademark infringement, several defenses may limit or eliminate liability, including:

  • Fair Use: Using a mark to describe your own products in good faith (e.g., comparative advertising or nominative use).
  • Lack of Confusion: Demonstrating that the average consumer is not likely to confuse the two marks.
  • Invalid Trademark: Challenging the validity or registration of the opposing party’s trademark.
  • First Use: Asserting prior use of the mark in commerce, which may override a later-registered mark.

It’s crucial to consult an intellectual property attorney to assess these defenses and ensure compliance with federal trademark law.

Federal Crimes That Intersect With Trademark Infringement

  • Counterfeit or Pirated Goods: Pirated and counterfeit items can intersect with alleged trademark infringement if your trademark is being applied to those illegal products. Both counterfeiting and piracy are federal crimes. If such issues are a part of your claim of trademark infringement, those suspicions should be reported to the appropriate federal agency. The duty complaint agent at your local Federal Bureau of Investigations (FBI) office can accept your initial complaint. The agency provides an online locator tool to help you find the office closest to you.
  • U.S. Customs and Border Protection Violations: Trademark infringement may involve a violation of U.S. Customs and Border Protection laws. These laws are designed to prevent illegal goods from entering the country. An example of how this might intersect with trademark infringement is if someone is bringing counterfeit goods into the country and applying your trademark to them. If you believe this is happening, your attorney can help you report this to the U.S. Customs and Border Patrol IPR Help Desk by telephone at 562-980-3119, ext. 252, or via email at [email protected].
  • Online Sale of Counterfeit or Pirated Goods: Trademark infringement may be associated with the sale of counterfeit or pirated goods online using your trademark. If that is the case, you can make a report to the Federal Bureau of Investigation Internet Crime Complaint Center (IC3). This agency offers a complaint form on its website to help you and your attorney begin the process.
  • Violations of Intellectual Property Rights: Counterfeit or pirated goods coming into the United States may violate intellectual property rights as well as trademark rights. The National Intellectual Property Rights Coordination Center has a complaint form on its website for reporting such violations.
  • Reoccurring Violations: If infringing imports are a regular problem you run into as the owner of a trademark, your attorney may suggest filing an investigation pursuant to 19 U.S.C. § 1337. Such an action is called a Section 337 investigation. The name refers to the legislation that makes it illegal to import items that infringe on utility and design patents. These laws also apply to registered and common-law trademarks and registered copyrights. Once you've filed your complaint, the U.S. International Trade Commission (USITC) is charged with carrying out Section 337 investigations. The USITC has the authority to issue exclusion orders to keep the offending products from getting into the United States. The agency can also issue a cease and desist order. Those orders are then enforced by U.S. Customs and Border Protection.

Repeat Offenders and Aggravated Circumstances

Repeat violations or infringement involving harm to health and safety (e.g., counterfeit pharmaceuticals or automotive parts) can trigger harsher penalties. Courts may increase sentencing under the U.S. Sentencing Guidelines if:

  • The offense involved risk to consumers
  • The infringement was part of organized criminal activity
  • There was prior criminal history related to IP violations

These circumstances elevate the seriousness of the offense and often lead to higher fines, longer imprisonment, or both.

Enforcement and Prosecution of Criminal Trademark Infringement

Enforcement of criminal trademark violations typically involves collaboration between federal law enforcement and trademark owners. Agencies like the Department of Justice (DOJ), U.S. Immigration and Customs Enforcement (ICE), and Homeland Security Investigations (HSI) pursue criminal cases against counterfeiters.

Investigations may involve:

  • Surveillance of counterfeit operations
  • Seizure of infringing goods
  • Coordination with international enforcement for cross-border violations

Prosecutors must prove that the defendant acted willfully and knowingly, which distinguishes criminal cases from civil trademark disputes.

Frequently Asked Questions

  1. What are the typical trademark infringement penalties?
    Penalties range from civil remedies like damages and injunctions to criminal penalties such as hefty fines and imprisonment for willful counterfeiting.
  2. Can trademark infringement be prosecuted criminally?
    Yes, particularly in cases involving counterfeiting or fraudulent use. Criminal cases are prosecuted under federal statutes and can result in prison time.
  3. What is the maximum fine for criminal trademark infringement?
    Fines can reach up to $2 million for individuals and $5 million for companies, with increased amounts for repeat offenders.
  4. How can I report a trademark infringement?
    Trademark owners can report violations to the FBI, U.S. Customs and Border Protection, or the National Intellectual Property Rights Coordination Center.
  5. Are there defenses against infringement claims?
    Yes. Common defenses include fair use, lack of consumer confusion, and prior use of the mark.

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