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.

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.

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 ipr.helpdesk@dhs.gov.
  • 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.

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