Protecting The Brand, Vol2: Busting The Bootlegs

Protecting the Brand
Volume II
Protecting the Brand
Volume II
Busting the Bootlegs
Peter Hlavnicka and Anthony Keats

Protecting the Brand, Volume II: Busting the Bootlegs
Copyright © Business Expert Press, LLC, 2022.
Cover design by Charlene Kronstedt
Interior design by Exeter Premedia Services Private Ltd., Chennai, India
All rights reserved. No part of this publication may be reproduced,

stored in a retrieval system, or transmitted in any form or by any
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except for brief quotations, not to exceed 400 words, without the prior
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First published in 2022 by

Business Expert Press, LLC
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www.businessexpertpress.com
ISBN-13: 978-1-63742-288-5 (hardback)

ISBN-13: 978-1-63742-206-9 (paperback)
ISBN-13: 978-1-63742-207-6 (e-book)
Business Expert Press Business Law and Corporate Risk

Management Collection
First edition: 2022
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Description
Protecting the Brand, Volume II: Busting the Bootlegs follows Volume I,
which provides a unique combination of legal and business best practices
related to intellectual property protection.
This second volume showcases U.S. states’ specific legal statutes and
examples related to the legal approach to counterfeiting and grey market
issues. The primary emphasis is to provide advice to companies navigating
the complex U.S. legislation and also provide a single source of reference
for both law practitioners and those tasked with intellectual property rights
enforcement and compliance who need to understand the applicable
U.S. state legislation.
Both volumes of this book are focused on leveraging trademark
enforcement while also commenting on copyright and patent enforcement,
establishing a framework for successful brand protection in the future.
Keywords
intellectual property; trademarks; brand protection; counterfeiting; grey
market; parallel import; best practices; case law; prevention; commercial
secrets; cybersquatting; remedies; procedures; enforcement; law prac-
titioners; business leadership; Lanham Act; global brand; technology;
online; websites; copyrights
Contents
Foreword��ix
Preface�� xvii
Acknowledgments�� xix
Chapter 1 State Civil and Criminal Anti-Counterfeiting Statutes��1

Chapter 2 Federal Criminal Law��263
Chapter 3 The Legal Framework for Protection from
Copyright Piracy��333
Chapter 4 Using the Lanham Act to Combat Grey and
Counterfeit Goods��383
Chapter 5 The Material Difference: Sections 32, 43(A),
and 42 of the Lanham Act and Section 526
of the Tariff Act��395
About the Authors��407

Index��409
Foreword
Have We Forgotten About the Consumer?
In 1990, Anthony (or Tony) had the wonderful opportunity to attend the
British Museum in London’s exhibition, “Fake? The Art of Deception.”
The vast displays of fakes included, among other works, ancient Greek
coins and E truscan sarcophagi, 18th-century French and English pottery,
Peruvian face masks, Ming porcelain and Zapotec pottery vessels, fake
works by Vermeer and Hockney, as well as the all-too-familiar counterfeit
luxury watches of today. One couldn’t help but recognize humankind’s
unceasing proclivity for fakery.
The curator of the British exhibition, David Jones, explained it this
way: “Fakes are, however, only secondarily a source of evidence for the
outlook of those who made and uncovered them. They are, before all else,
a response to demand, an ever-changing portrait of human desires. Each
society, each generation, fakes the thing it covets most.”1 Writing 30 years
ago, Jones went on to say:
It may be significant then that the great growth area for faking
today is not the creation of religious relics, national epics, or works
of art, nor even some specifically modern area like the production
of spurious scientific data (though that is on the increase), but the
massive counterfeiting of brand-named goods … . If fakes provide
a unique portrait of the changing focuses of human desires, they
also delineate the evolution of taste with unrivalled precision.
Where there are fakes it is clear that there was a booming market
in the things thus imitated: fakers are above all creatures of the
market. Unencumbered by the individualism of a great artist or
thinker, they move quickly to take advantage of the high prices
produced by a new fashion before the development of expertise
Mark Jones, Fake?: The Art of Deception at 13 (British Museum Publications 1990).
1
x Foreword
makes their task more difficult or, worse still, their activities
undermine the market altogether (as was the case with the market
for classical gems in the mid-nineteenth century).2
Our two-volume exploration of brand protection includes informa-

tion on what owners of brands can do under the law and in business to
enhance the protection of these valuable assets. Our focus is primarily on
commerce as opposed to works of art and brand identification as opposed
to the products themselves. However, as history has shown, the creative
community is also the target of the counterfeiter in the form of copyright
piracy ranging from films, music, and photography, to fashion, sculpture,
and architecture. The impact of counterfeiting may even be more dam-
aging for the individual creator than for a large commercial enterprise.
Brands have been universally recognized as valuable commercial
assets. Their value, in part, rises and falls on the connection between the
brand and its constituencies. The brand is not only important to an orga-
nization’s bottom line but also to the employees of companies, to the
consumers who purchase the products and services, and to third parties
who look to brands as communicators of consistency and reliability.
The goodwill associated with this intellectual property is inextricably
tied to the health and profitability of its owners. For decades, our federal
and state governments have enacted laws to specifically address what pro-
tection and relief is available to intellectual property owners. We hope
we have provided guidance on some of the ways owners can protect their
intellectual property and the recourse that may be available if they fall
victim to unauthorized use of their intellectual property by others.
The growth of digital commerce has allowed trademark counterfeit-
ing and grey marketing to explode. Some of the guardrails that would
protect the consumers and brands are disappearing, including the brick-
and-mortar sales space that enabled one to physically examine goods prior
to purchase. At the same time, in-person buying also allows for the sales
of bogus products in fixed urban retail locations as well as “pop-up” sites
such as flea markets and stadium venues.
2
Id. at 13–14.
Foreword
xi
Organizations of brand owners such as the International Anti-

Counterfeiting Coalition (IACC), Union des Fabricants (UNIFAB), and
the International Trademark Association (INTA) have coalesced to pro-
tect these valuable IP assets, to pursue stricter civil and criminal penalties,
and to encourage government institutions to enforce such laws. As set
out in this volume,the U.S. federal government as well as state legisla-
tures have focused on the objective of consumer protection when it comes
to trademark counterfeiting as opposed to simply the economic losses
experienced by corporate brand owners. This focus of preventing harm to
the consumer is evident when viewing the legislative histories of the two
most significant federal trademark laws in effect today: The Lanham Act3
and The Trademark Counterfeiting Act.4 For decades, industries involved
in manufacturing products that directly affected the health and safety
of consumers were reluctant to admit they had counterfeiting problems.
Counterfeit pharmaceuticals, car parts, toys, and food products were qui-
etly dealt with by the rights holders or the relevant government agencies
without garnering public attention. With the advent of the Internet, from
counterfeit pharmaceuticals to baby formula and airplane parts, it has
been impossible for brand owners to hide incidents of counterfeiting that
directly affect the health and safety of the public.
Despite the millions of dollars of investment by IP rights holders,
governments, and online platforms to fight consumer purchases of

counterfeits, consumer demand appears unabated and growing. But after
40 years of an organized war on counterfeiting, has the effort been too
focused on the suppliers while failing to convince the consumer that
counterfeiting is even a problem with which they should be concerned?
Recent studies indicate that all of the enacted laws and highly publicized
seizures of bogus products have not convinced the general public that
they should forgo purchasing counterfeit goods.
Why should counterfeiting matter to the consumer? It is not just a
tired trope to assert that many counterfeits pose a true health and safety
risk to the consumer. Products utilizing counterfeit IP are usually devel-
oped and manufactured without regard to the same recognized and
3
15 U.S.C. § 1051–1127 (1946).
4
15 U.S.C. § 1117 and 18 U.S.C. § 2320 (1984).
xii Foreword
acceptable standards and production norms of genuine goods. These

standards of production are designed specifically to ensure safe use of
the goods and products by consumers. Counterfeit consumer electronics,
which composed 11 percent of U.S. Customs and Border Protection sei-
zures in 2019,5 often come loaded with malware that preys on the private
information of its unsuspecting user.6 They also can come equipped with
lithium-ion batteries that may overheat and even explode if not produced
under proper standards.7 Another example is counterfeit automotive
parts, which are more prone to malfunction or complete failure that may
result in automobile accidents or prevent a driver or passenger from being
adequately protected in the event of an accident.8
The World Health Organization estimates counterfeit pharmaceuti-
cals comprise 10 percent to 30 percent of all pharmaceuticals in devel-
oping countries.9 While they also estimate that only 1 percent of drugs
in developed countries are counterfeited, they fear the issue may worsen
with the growing availability of pharmaceuticals online.10 Interpol esti-
mates that these counterfeit pharmaceuticals, which are often incorrectly
dosed or made with the wrong ingredients, cause more than one million
deaths per year.11 The problem was illustrated in one study done in 2013,
which found that counterfeit malaria pharmaceuticals in Sub-Saharan
5
The Truth Behind Counterfeits, U.S. Customs and Border Protection, www.cbp.
gov/trade/fakegoodsrealdangers (accessed September 28, 2021).
6
OECD-EUIPO, Trends in Trade in Counterfeit Goods, OECD Publishing
Paris, at 17 (2020), www.oecd.org/corruption-integrity/reports/trends-in-trade-
in-counterfeit-and-pirated-goods-g2g9f533-en.html (accessed September 28,
2021) [hereinafter OECD-EUIPO Report].
7
Counterfeit Goods: A Danger to Public Safety, U.S. Immigration & C ustoms
Enforcement, www.ice.gov/features/dangers-counterfeit-items (accessed September
28, 2021).
8
Id.
9
Id. at 53.
10
Id.
11
Id. (citing Natalie Southwick, Counterfeit Drugs Kill 1 Million People Annually
– Interpol!, Insight Crime (October 24, 2013), www.insightcrime.org/news-briefs/
counterfeit-drugs-kill-1-million-annually-interpol (accessed September 28, 2021).
Foreword
xiii
Africa contributed to more than 120,000 deaths of children under the

age of five.12
Knowing that laws worldwide have been enacted to combat the real
threat counterfeits pose to consumers, it is unclear why counterfeits are
an evermore present danger. In certain instances, it is clear that the high
consumer price of certain necessities such as pharmaceuticals will create
a market for counterfeit and grey market products. The Organization
for Economic Co-operation and Development (OECD) estimates the
value of trade in counterfeit goods at $509 billion, or 3.3 percent of all
world trade, and only expects this number to rise.13 Significantly, these
estimates do not include domestically produced counterfeits or digital
goods pirated on the Internet.14
Scholarly research in recent years has attempted to assess consumer
attitudes toward counterfeits. One study surveyed 1,000 consumers
across the United Kingdom, Mexico, Russia, South Korea, and India, and
found that 80 percent of them had purchased a counterfeit good in the
past.15 This study also found that the higher the income a participant had
and the older they were, the less likely they were to have purchased coun-
terfeits in the past.16 In this 2010 study, the most commonly purchased
counterfeit items were DVDs, CDs, clothing and computer software,
and the least commonly purchased were medicine/pharmaceuticals and
12
Id. (citing Nayyar G. M. L., Breman J. G. and Herrington J. (2015) “The
Global Pandemic of Falsified Medicines: Laboratory and Field Innovations and
Policy Perspectives,” The American Journal of Tropical Medicine and Hygiene
15-0221 www.ajtmh.org/content/early/2015/04/16/ajtmh.15-0221.full.pdf+html
(accessed September 28, 2021).
13
The ICC Intellectual Property Roadmap, The International Chamber of Com-
merce, at 92 (2020) https://iccwbo.org/publication/icc-intellectual-property-
roadmap-current-emerging-issues-business-policymakers/#1604497444122-
3ba98c38-9fc7 (accessed September 28, 2021). [hereinafter ICC IP Roadmap]
14
Citing OECD-EUIPO Report, supra note 6, at 11.
15
H. Jeffrey. Research Report on Consumer Attitudes and Perceptions on
Counterfeiting and Piracy, World Intellectual Property Organization, at 5

(September 06, 2010), https://www.wipo.int/meetings/en/doc_details.jsp?doc_
id=142755 (accessed September 28, 2021).
16
Id.
xiv Foreword
cigarettes.17 Surprisingly, more than 50 percent of those surveyed said

they purchased counterfeits in “regular” stores.18
When asked why they decided to purchase a counterfeit product, 71
percent of consumers stated they did so because they couldn’t afford the
original.19 Additionally, 57 percent of consumers said they purchased
because they were unaware the item was a counterfeit at the time.20
Fifty-seven percent of consumers also purchased because they thought the
genuine product was overpriced.21 Health risks were the strongest deter-
rent to purchasing counterfeits, with 70 percent of respondents stating
they believed that this was the best argument against buying counterfeits.22
Lastly, 50 percent of the respondents said they would purchase counter-
feit software and clothes if offered at the right price or if a genuine item
was less available, but only 20 percent said they would do the same for
food products, and only 10 percent for medicine and pharmaceuticals.23
A report prepared by the U.S. Patent and Trademark Office in 2020
reviewing research into consumer attitudes toward counterfeit products
echoes many of the data points discovered in the above studies.24 It finds
that the consumers who purchase counterfeits are largely driven by, “an
inability to afford the genuine item; a perception that the genuine item
is overpriced, and so purchasing a counterfeit is justified; and a lack
of awareness that an item is counterfeit.”25 Conversely, consumers are
deterred from purchasing counterfeits if they are aware of potential health
risks, equate purchasing counterfeits with wasting money, and under-
stand that purchasing counterfeits may preclude them from enjoying the
17
Id.
18
Id.
19
Id. at 6.
20
Id.
21
Id.
22
Id.
23
Id.
24
U.S. Intellectual Property and Counterfeit Goods – Landscape Review of Existing/
Emerging Research, U.S. Patent and Trademark Office, at 35 (2020), www.uspto.
gov/sites/default/files/documents/USPTO-Counterfeit.pdf (accessed September
28, 2021).
25
Id.
Foreword
xv
services and warranties that come with genuine products.26 This report
also notes that age and education level frequently correlated with an indi-
vidual’s attitudes toward the purchase of counterfeit goods. Specifically,
those aged 18 to 34 years old are twice as likely to purchase counterfeits
than older customers, and a higher level of education makes one more
resistant to purchasing counterfeit goods.27
A 2021 study surveying 1,000 adults in the United States found
that 46 percent of these adults had knowingly purchased a counterfeit
good in the past, and 30 percent admitted to doing so on more than
one occasion.28 Age was a good indicator of willingness to purchase
counterfeit goods, with 70 percent of Generation Z and 63 percent of
Millennial respondents stating they had purchased counterfeit goods in
the past.29 These purchases were in spite of the fact that 61 percent of
respondents stated they knew that purchasing counterfeits was not “a
victimless crime.”30 Further, 55 percent stated they knew counterfeits
harm the imitated brand, 49 percent noted it opened them up to safety
issues, and 47 percent know it supported criminal activity.31 Ultimately,
these choices were market-driven with 42 percent saying their primary
motivator was lower price, and 24 percent saying their primary motivator
was availability.32 Lastly, almost half of all respondents said they would
continue to use their counterfeit product as long as it served its function.33
So, if IP rights holders are to make progress in controlling
counterfeiting, it is clear that much more effort must be focused on the
demand. First, consumers who purchase counterfeits seem largely driven
by an internal cost/benefit analysis when deciding whether to purchase
counterfeits. The research shows that a significant majority of people
26
Id.
27
Id.
28
D. Jane. Anaqua Consumer Survey: The State of Counterfeit Goods, Anaqua
(August 26, 2021), www.anaqua.com/anaqua-consumer-survey-the-state-of-
counterfeit-goods-blog/ (accessed September 28, 2021).
29
Id.
30
Id.
31
Id.
32
Id.
33
Id.
xvi Foreword
decide to purchase counterfeit goods because they cannot afford the

original. However, when asked about whether price would affect their
decision to purchase genuine medicine or food products, this number
sharply declined. This is likely because common sense tells people that
counterfeits of this nature pose a substantial risk to their health. In the
context of pharmaceuticals and food products, the benefits derived from
saving money are greatly outweighed by the perceived costs.
Consumers generally do not care enough about the profitability of
companies nor the impact of counterfeiting on employment, taxes, or the
general economy. Consumers don’t seem to care enough about the alleged
relationships between counterfeiting, organized crime, or “terrorism.”
It seems most consumers are motivated to buy genuine products over
counterfeits based on the perceived impact counterfeits may have on
their personal health and finances. While certain demographics such as
age, education, and income level correlate with a higher likelihood of
purchasing counterfeit products, it appears that most consumers will have
purchased a counterfeit product knowingly or unwittingly.
Consumers play a significant role in the counterfeiting ecosystem.
In many ways, the demand for substandard, cheaper products feeds the
beast. Clearly, the economics for both the counterfeiter and the consumer
plays a pivotal role. Organizations like the IACC have taken the lead in
focusing on cutting off the money trail to counterfeiters by working
with payment processors and credit card companies to halt payments
to online counterfeit vendors. At the same time, if counterfeiting is to
be curtailed, consumers must be educated not only about the safety and
efficacy issues relating to counterfeit goods but also about other negative
aspects of counterfeiting such as environmental impact and exploited
labor. Most importantly, consumers should be informed to respect the
creative endeavors of others, whether it be a patented pharmaceutical,
an animated film, the “it” handbag of the moment, or an exquisitely
made watch.
Preface
While Volume 1 of this book provides a unique combination of legal and
business best practices related to intellectual property protection, Volume
2 showcases specific U.S. states’ specific legal statutes and examples
related to the legal approach to counterfeiting and grey market issues. The
primary emphasis is again on providing advice to companies about how
to navigate the complex U.S. legislation and to provide a single source
of reference for both law practitioners (educating them about the legal
remedies available to their clients) and any person or team tasked with
intellectual property rights enforcement and compliance that needs to
understand the applicable state legislation. Both volumes of this book
are focused on leveraging trademark enforcement while also commenting
on copyright and patent enforcement, establishing a framework for
successful brand protection in the future.
Acknowledgments
We would like to express our gratitude to all of the mentors, clients, law
firm and business colleagues, friends and family who have allowed us to
enjoy such rich and fulfilling careers in the field of intellectual property
law, business, and venture capital. We would like to thank in particular
Darrell Orme Mann, a legal professional extraordinaire, who worked with
clients in intellectual property law for more than 20 years, for her signif-
icant contributions to this book. We would also like to thank Brett Voets
for his dedication and research contributions to this project.
CHAPTER 1
State Civil and Criminal

Anti-Counterfeiting Statutes
A Parallel System of Trademark
Anti-Counterfeiting Statutes
Although the Founding Fathers of the United States considered the
need to encourage innovation and protect creativity for limited periods
of time through patents and copyrights, they did not give trademarks
similar c onsideration. In fact, although counterfeiting had been taking
place in various forms for centuries, trademark counterfeiting has grown
exponentially in the modern industrial age. While federal and state
governments have recognized the need to protect the consumer from
confusion with regard to the source of a product or service, there has
also been a significant surge in the value of trademark assets through
commercial advertising and sales of branded goods. This has created
portfolios of valuable assets for the brand owners as well. The confluence
of these two interests has brought about the passage and implementation
of state, as well as federal, civil, and criminal anti-counterfeiting statutes.
In the United States, unlike the exclusive federal laws pertaining to
patents and later to copyrights, a parallel system of state and federal law
developed to protect trademarks. Commercial issues relating to false
labeling, forgery, and the like led to the development of various unfair
trade practice laws among the states. Almost every state had these types
of consumer protection statutes. For example, in 1881, New York’s
legislature enacted Penal Code Section 364, which made trademark

counterfeiting a misdemeanor.1 However, as commerce became national
Feinberg, “Criminal Enforcement of State Anticounterfeiting Laws,” in Trademark

1
Counterfeiting in the United States, 4-2, 4-2 (Brokate & Atlas eds. 2008).
2 Protecting the Brand, Volume II
in scope and products and services were available throughout the country,
consumers needed the same protection everywhere. Unfortunately, many
states treated the same harm to the consumer differently.2
Congress enacted the Lanham Act in 1946 in order to provide

national protection for trademarks used in interstate and foreign
commerce. S. Rep. No. 1333, 79th Cong., 2d Sess., 5 (1946).
Previous federal legislation, such as the Federal Trademark Act of
1905, 33 Stat. 724, reflected the view that protection of trade-
marks was a matter of state concern and that the right to a mark
depended solely on the common law. S. Rep. No. 1333, at 5.
Consequently, rights to trademarks were uncertain and subject
to variation in different parts of the country. Because trademarks
desirably promote competition and the maintenance of product
quality, Congress determined that “a sound public policy requires
that trademarks should receive nationally the greatest protection
that can be given them.”3
Congress passed the Lanham Act in 1946 to bring a single unified statu-
tory scheme to the treatment of trademarks, similar to that accorded to
patents and copyrights before.
2
See Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 193, 105 S.Ct.
658, 83 L.Ed.2d 582 (1985) (noting that the Lanham Act was passed to combat
uncertainty and variation throughout the country with respect to one’s right to
a mark). See also, Thrifty Rent-A-Car System, Inc. v. Thrift Cars, Inc., 831 F.2d
1177, 1180 (1st Cir. 1987) (noting that with increased commerce and the greater
mobility of society a more consistent trademark protection scheme like the Lan-
ham Act was necessary).
3
Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 193, 105 S.Ct. 658,
83 L.Ed.2d 582 (1985).
State Civil and Criminal Anti-Counterfeiting Statutes 3
Why Is the Parallel System of Trademarks

Important or of Value?
Unlike patent and copyright protection, state laws relating to trademarks
may be broader than the Lanham Act.4 The Lanham Act does not pre-
empt state law.5 Both federal and state courts have concurrent jurisdiction
over matters arising under the Lanham Act.6
From a practical point of view for practitioners involved in enforce-
ment efforts against counterfeiters, the ability to use either federal or state
law is of great benefit. A rights holder may be a new company that has only
been able to obtain a state trademark registration in its short existence,
while its federal trademark application is still pending. The federal Lan-
ham Act requires a federal registration for its anti-counterfeiting provisions
to apply.7 A mark may not have been registered federally if it was only
used in “intrastate” commerce. The Lanham Act requires that the federal
registration be for the class of goods upon which the counterfeit goods
are applied.8 For example, a trademark registration for handbags will not
permit federal enforcement when it is a fragrance that is the subject of the
counterfeiting. Certain states, however, do not require that the trademark
registration be for the same type of goods as those being counterfeited.
The Lanham Act defines a counterfeit mark as:
1. A counterfeit of a mark that is registered on the principal register

in the United States Patent and Trademark Office for such goods
4
See Golden Door, Inc. v. Odisho, 646 F.2d 347, 352 (9th Cir. 1980) (finding
California law, which provided federal trademark registrants greater protection
than was available under the Lanham Act, to be valid).
5
Sears, Roebuck and Co. v. Sears Realty Co., Inc., 932 F. Supp. 392, 400
(N.D.N.Y. 1996).
6
Aquatherm Industries, Inc. v. Florida Power & Light Co., 84 F.3d 1388, 1394
(11th Cir. 1996).See Cleary v. News Corp., 30 F.3d 1255, 1262-1263 (9th Cir.
1994) (finding that California common law and statutory unfair competition
claims were “substantially congruent” to claims under the Lanham Act).
7
See15 U.S.C. §§ 1114(1) and 1114(1)(a) (“Any person who shall, without the
consent of the registrant … use in commerce any reproduction, counterfeit, copy
or colorable imitation …”).
8
See 15 U.S.C. § 1114.
or services sold, offered for sale, or distributed and that is in use

whether or not the person against whom relief is sought knew such
mark was so registered; or
2. a spurious designation that is identical with, or substantially
indistinguishable from, a designation as to which the remedies
of this chapter are made available by reason of section 220506 of
Title 36.9
This will differ from the definition of a counterfeit mark provided

in certain state statutes. Some states may have a statutory definition
that is broader, such as including “imitation.”10 In addition, there are
other benefits, ranging from legal presumptions of exclusive rights11 to
providing constructive notice of the trademark rights to counterfeiters
within the state.12
Of greater significance with respect to enforcement of the criminal
statutes is the practicality of determining which law enforcement agen-
cies will be interested in receiving a criminal referral, a state department
of justice or the Federal Bureau of Investigation (FBI) and the U.S.
Attorney’s Office. It will more often than not be the case that criminal
enforcement will be a local matter at the state, county, or city level,
often only requiring the showing of a state trademark registration at
a minimum. The dollar value of the case or whether the subject goods
involve health and safety or national security issues will also be fac-
tors in considering whether to look to state or federal law enforcement
agencies.13
9
15 U.S.C. § 1116(d)(1)(B) (2008).
10
See Fla. Stat. Ann. § 831.03(3)(b).
See also:
Ohio:Ohio Rev. Code Ann. § 2913.34(F)(1)(a).
Rhode Island:R.I. Gen. L. § 11-17-13.
11
See, e.g., Texas.Tex. Bus. & Com.Code§16.060(c)(3).
12
See e.g., Texas.Tex. Bus. & Com.Code§16.060(b).
13
See the current civil and criminal state laws used by state and federal p
rosecutors
in the prosecution of counterfeiting and related claims at §§ 9.03 and 9.04 infra.
The statutes cited may have changed since this writing and one must confirm that
these statutes as noted are still operative in the relevant state jurisdictions.
U.S. State Civil Statutes

Alabama14
Statute Code Provision Statutory Description
Trademark Ala. Code §§8-12-6 A state trademark registration is required
Registration to 19 (1993 Repl. for a party to sue for trademark counterfeit-
Vol.) ing or infringement in Alabama. Remedies
include injunctive relief and recovery of
the infringer’s profits and/or the owner’s
damages and costs. Ala. Code §§8-12-16 to
18 (1993 Repl. Vol.). A state registration
is not required for the public prosecutor
to bring criminal charges for the theft of
trademarks. Ala. Code §§13A-8-10.4
(1994 Repl. Vol.); Ala. Code §8-12-19
(1993 Repl. Vol.).
Dilution Ala. Code § 8-12- The statute provides for injunctive relief
17 (1993 Repl. only.
Vol.).
Unfair Business Not applicable Alabama does not have an unfair business
Practices Act practices act, which would apply to trade-
mark matters.
Unfair Not applicable Alabama does not have a separate civil
Competition statute prohibiting unfair competition.
Common Law Not applicable Alabama state courts have recognized a
common law cause of action for unfair
competition, which includes palming off
and imitation of unregistered trademarks.
Remedies: Injunctive relief, damages,
profits and, in exceptional cases, punitive
damages.
Alaska
Trademark AS §§ 45.50.010- A state trademark registration is required
Registration 45.50.205 for a party to sue for trademark coun-
terfeiting or infringement in Alaska.
Remedies include injunctive relief and,
where the acts are committed with the
intent to cause confusion, mistake, or to
deceive, the registrant may recover profits
or damages. The court may also order that
the counterfeits or imitations be delivered
up for destruction and may enter judgment
for punitive damages in an amount not to
exceed three times the profits and damages.
AS §§ 45.50.180
Dilution AS § 45.50.180(d) The statute provides for injunctive relief
against another’s dilution of a famous
mark and, for willful dilution, the same
remedies as for trademark infringement or
counterfeiting.
Unfair AS § 45.50.471 Remedies: Injunctive relief, civil penalties
Competition to be paid to the State, and reasonable
attorneys’ fees and costs.
Arizona
Trademark A.R.S. § 44-1441 A state trademark registration is
Registration et seq. required for a party to sue for trademark
counterfeiting or infringement in
Arizona. Remedies include injunctive
relief, recovery of infringer’s profits and/
or damages (A.R.S. § 44-1451), and
destruction of infringer’s goods.
Dilution A.R.S. § 44-1448.01 The statute provides for injunctive relief
against another’s dilution of a famous
mark and, for willful dilution, the same
remedy as for trademark counterfeiting or
infringement.
(Continued)
Arizona
Unfair Business A.R.S. § 44-1522 The act prohibits unlawful business
Practices Act practices and prohibits any deception,
deceptive act or practice, fraud, false pre-
tense, misrepresentation, or concealment,
suppression, or omission of any material
fact with intent that others rely upon such
concealment, suppression, or omission, in
connection with the sale or advertisement
of any merchandise whether or not any
person has in fact been misled, deceived,
or damaged thereby. Damages are limited
to actual damages.15 If the violations are
willful, then punitive damages may be
assessed.16 If one has willfully committed
an unlawful business practice then the
attorney general upon petition to the court
may recover from the person on behalf of
the state a civil penalty of not more than
US$10,000 per violation.
Unfair Not applicable Arizona does not have a separate statute
Competition prohibiting unfair competition.
Common Law Not applicable Arizona state courts have recognized

common law rights in trademarks and
actions for unfair competition.17 The
question is whether there was confusion
to the public.18 Damages may include
injunctive relief.
15
Perry v. Hansen, 585 P.2d 574 (Ariz. App. 1978).
16
Sellinger v. Freeway Mobile Home Sales, Inc., 521 P.2d 1119 (Ariz. 1974).
17
Kaibab Shop v. Desert Son, Inc., 662 P.2d 452 (Ariz. App. 1982).
18
Taylor v. Quebedeaux, 617 P.2d 23 (Ariz. 1980).
Arkansas
Trademark Ark. Code Ann. §§ A state trademark registration is required
Registration 4-71-201 to 218 for a party to sue for trademark counterfeit-
ing or infringement in Arkansas. Remedies:
Injunctive relief, recovery of infringer’s
profits and/or damage and destruction of
counterfeits or imitations in the posses-
sion or control of the defendant. Treble
damages and/or attorneys’ fees are also
recoverable if the court finds knowledge
or bad faith. Arkansas does not provide
for any criminal sanctions for engaging
in trademark counterfeiting outside of
controlled substances.
Dilution Ark. Code Ann. The statute provides for injunctive relief
§4-71-213 and, if willful intent is shown, recovery of
profits and/or damages, and attorneys’ fees.
Unfair Not applicable Arkansas does not have a separate state
Competition statute prohibiting unfair competition
related to trademarks. The courts have
defined “unfair competition” to mean “a
course of dealing which leads, or is likely
to lead, consumers into believing that the
goods or services of one supplier are those
of another.”19
Consumer Fraud Not applicable Arkansas has not enacted any consumer
fraud statutes.
Common Law Not applicable Arkansas recognizes common law
actions for both trademark and trade
name infringement.
19
Southwestern Bell Telephone Co. v. Nationwide Independent Directory
Service, Inc., 371 F. Supp. 900, 907 (W.D. Ark. 1974).
California
Trademark Cal. Bus. & Prof. A state trademark registration is not
Registration Code §§ 14200 required for a party to sue for trademark
et seq. counterfeiting or infringement in Califor-
nia. Remedies include injunctive relief to
prevent future harm, as well as up to three
times the registrant’s losses, and three
times the infringer’s profits. In addition,
the court may order that all counterfeits
be destroyed. Cal. Bus. & Prof. Code §
14250. A state registration is not required
for the public prosecutor to bring criminal
charges for theft of trademarks. Cal. Penal
Code §350.
Dilution Cal. Bus. & Prof. The statute provides for injunctive relief to
Code §§ 14245 prevent dilution of a mark that is famous
et seq. and distinctive. If the dilution is willful,
the owner shall be entitled to remedies set
forth in §14250.
Unfair Cal. Bus. & Prof. California recognizes a common law right
Competition Code §§ 17200 of unfair competition, which provides for
et seq. injunctive relief and restitution.20
Unfair Business Cal. Bus. & Prof. The Act protects consumers and
Practices Act Code § 17000 competitors. Remedies: Injunctive relief
et seq. as well as any other orders necessary to
restore the party harmed by the unfair
business ethics. In addition, any plaintiff
shall be entitled to recovery of three times
the amount of actual damages, if any. Cal.
Prof. Code § 17082.
Common Law Not applicable California courts recognize a common law
right of unfair competition, which provides
for injunctive relief and restitution.21
20
See: Mallard Creek Industry, Inc. v. Morgan, 56 Cal. App.4th 426 (1997);
Lebas Fashion Imports, USA, Inc. v. ITT Hartford Insurance Group, Inc., 50
Cal. App.4th 548 (1996).
21
Id.
Colorado
Trademark Col. Rev. Stat. A state trademark registration is required
Registration §§7-70-101 et seq.22 for a party to sue for trademark coun-
terfeiting or infringement in Colorado.
Remedies: Injunctive relief, recovery of
infringer’s profits, or damages. Col. Rev.
Stat. §7-70-112. Attorneys’ fees may also
be awarded.
Dilution Not applicable Colorado does not have a separate statute
for dilution.
Unfair Business Col. Rev. Stat. The statute, also referred to as the Con-
Practices Act §§6-1-105 et seq. sumer Protection Act, prohibits the passing
off of goods and services of another. Relief
Col. Rev. Stat. under the deceptive trade practice is avail-
§§6-1-113 et seq. able to any person in a civil action. Dam-
ages include monetary relief and attorneys’
fees and costs.23 In addition, treble damages
may be awarded in cases of bad faith.
Unfair Not applicable Colorado does not have a specific
Competition statute for unfair competition related to
trademarks.
Common Law Not applicable State courts have recognized common law
actions for unfair competition. Remedies:
Injunctive relief, damages, or profits.24
22
Readers should be aware that various sections of this Act relating to trademark
registration and remedies have been repealed, effective May 2007.
23
Dodds v. Frontier Chevrolet Sales and Services, Inc., 676 P.2d 1237 (Col.
App. 1983).
24
Lexton-Ancira Real Estate Fund, 1972 v. Heller, 826 P.2d 819 (Col. 1992);
Dunlap v. Colorado Springs Cablevision, Inc., 829 P. 2d 1286 (Col. 1992).
Connecticut
Trademark Conn. Gen. Stat. A state trademark registration is required
Registration §§35-11a et seq. for a party to sue for trademark counter-
feiting or infringement in Connecticut.
infringer’s profits and/or damages, and
destruction or delivery to complainant of
sion or control of the defendant. A state
registration is not required for the public
prosecutor to bring criminal charges for
theft of trademarks. Conn. Gen. Stat.
§53-347a.
Dilution Conn. Gen. Stat. The statute provides for injunctive relief,
§§ 35-11i(c) et seq. and for willful violations, recovery of
infringer’s profits and/or damages, and
destruction of counterfeits or imitations in
the possession of the defendant.
Unfair Not applicable Connecticut does not have a separate state
Unfair Business Conn. Gen. Stat. Connecticut’s Act protects consumers
Practices Act Ann. §§42-110a and competitors. Remedies: Injunctive
et seq. relief, recovery of infringer’s profits and/or
damages, and destruction of counterfeits or
imitations in the possession or control of
the defendant.
Common Law Not applicable Connecticut recognizes a common law
right of unfair competition, including
infringement of trademarks, trade names,
and trade dress. Remedies: Injunctive relief
and damages.
Delaware
Trademark 6 Del. Code Ann. A state trademark registration is required
Registration §§3301a et seq. for a party to sue for trademark coun-
terfeiting or infringement in Delaware.
Remedies: Injunctive relief and an award of
lost profits and/or damages. The court may
also order that all counterfeits or imitations
be delivered up for destruction. See Del.
Code Ann. tit. 6, §§ 3312 & 3314.
(Continued)
Delaware
Dilution 6 Del. Code Ann. The statute provides for injunctive relief
§3313 to prevent the dilution of a mark registered
under this chapter or dilution of a mark or
trade name valid at common law.
Unfair 6 Del. Code Ann. Delaware has a separate statute prohibiting
Competition §2532 & §2533 unfair competition. Remedies: Injunctive
relief and, in exceptional cases, the court
may award reasonable attorneys’ fees to the
prevailing party. Costs or attorneys’ fees
may be assessed against a defendant only if
he or she willfully engaged in a deceptive
trade practice. The relief provided is in
addition to remedies, otherwise available
under the common law or other Delaware
statutes.
Common Law Not applicable Connecticut has recognized a common
law right of unfair competition. If damages
are awarded to the aggrieved party, under
common law or other Delaware statutes,
such damages awarded shall be treble the
amount of actual damages proved. See 6
Del. Code Ann. §2533.
District of Columbia
Trademark Not applicable The District of Columbia does not have a
Registration separate Trademark Registration statute.
Marks are registered federally under the
Lanham Act.
Dilution Not applicable The District of Columbia does not have a
separate statute for dilution.
Unfair Business Not applicable The District of Columbia does not have an
Practices Act unfair business practices act, which would
apply to trademark matters. However, D.C.
Code §§28-3901 et seq., the District of
Columbia’s Unfair Business Practices Act,
does prohibit passing off goods or services
as those of another.
(Continued)
District of Columbia
Unfair Not applicable The District of Columbia does not have
Competition a separate statute prohibiting unfair
competition.
Common Law Not applicable Local courts have held that a common law
cause of action exists.25 The elements of such
common law action follow the Lanham Act.
Remedies: Injunctive relief and damages.
Florida
Trademark Regis- Fla. Stat. Ann. A state trademark registration is required
tration §§495.001 et seq. for a party to sue for trademark counterfeit-
ing or infringement in Florida. Remedies:
Injunctive relief and an award of lost
profits and/or damages. The court may also
order that all counterfeits or imitations be
delivered up for destruction. See Fla. Stat.
Ann. §§ 495.021& 495.141.
Dilution Fla. Stat. Ann. § The statute provides for injunctive relief
495.151 only, unless willful intent to trade on the
owner’s reputation or to cause dilution of
the famous mark is proven. Once proven,
lost profits and/or damages may be awarded.
Deceptive and Fla. Stat. Ann. Aggrieved parties may seek declaratory
Unfair Trade §§501.204 et seq. judgment, an injunction, actual dam-
Practices ages, attorneys’ fees and costs. However,
damages, fees or costs are not recoverable
against a retailer who has, in good faith,
engaged in the dissemination of claims
of a manufacturer or wholesaler without
knowledge that it violated this part.
Unfair Not applicable Florida does not have a separate state civil
Common Law Fla. Stat. Ann. State courts have recognized a common
§495.161 law cause of action for unfair competition,
which includes palming off and imitation
of unregistered trademarks. Remedies:
Injunctive relief, damages, and profits.26
25
Blacks in Government v. National Ass’n. of Blacks Within Government, 601
F. Supp. 225 (D.D.C. 1983).
26
Luckie v. McCall Manufacturing Co., 153 So.2d 311 (Fla. App. 1963). See
also, Great South Bank v. First South Bank, 625. So.2d 463 (Fla. 1993).
Georgia
Trademark Ga. Code Ann. A state trademark registration is required
Registration §§10-1-440 et seq. for a party to sue for trademark counterfeit-
ing or infringement in Georgia. The owner
of a registered mark is entitled to liquidated
damages in the amount of $10,000, if the
act was committed with knowledge that
the mark had been registered and without
previously obtaining the consent of the
owner, and for any or all of the following
remedies: an injunction, profits, damages,
or both profits and damages, and destruc-
tion of counterfeit goods, except that
actual damages shall not be recoverable
Revision: when liquidated damages are sought, and
Ga. Code Ann. registrant shall not be entitled to recover
§10-1-444 profits or damages unless the acts have
been committed with knowledge that such
trademark or service mark is intended to
be used to cause confusion, mistake, or to
deceive. Ga. Code Ann. §10-1-450.27
Removed: “Any certificate of registration
issued by the Secretary of State under the
provisions of this Code section or a copy
thereof duly certified by the Secretary of
State shall be admissible in evidence as
competent and sufficient proof of the reg-
istration of such trademark or service mark
in any action or judicial proceedings in any
court of this state.”
Dilution Ga. Code Ann. Remedy: Injunctive relief only.
§10-1-451(b).
Unfair Ga. Code Ann. An action under this section may be
Competition §23-2-55 based upon passing off, unauthorized use
of the name or mark of another, or other
traditional forms of unfair competition.
Remedy: Equitable relief.
27
It should be noted that under Ga. Code Ann.Section 10-1-454 there is poten-
tial criminal liability for any trademark, service mark, or copyrighted or registered
design that is registered for those types of goods or services with the Secretary of
State pursuant to this part or registered on the Principal Register of the United
States Patent and Trademark Office or registered under the laws of any other state
or protected by the federal Amateur Sports Act of 1978, 36 U.S.C. § 380.
Hawaii
Trademark Haw. Rev. Stat. A trademark registration is required for a
Registration §§482-2 et seq. party to sue for trademark counterfeiting
or infringement in Hawaii. Remedies:
Injunctive relief, all profits, and destruc-
tion of all counterfeits or imitations in the
possession or control of defendant. The
court, in its discretion, may enter judgment
for an amount not to exceed three times
the lost profits and damages incurred by
the owner, and award reasonable attorneys’
fees to the owner when the court finds that
the defendants committed the wrongful
acts knowingly or in bad faith.
Dilution Haw. Rev. Stat. The Act provides for injunctive relief only,
§482-32 unless willful intent is proven, in which
case the court may award profits and dam-
ages, as well as treble damages if the acts
were committed in bad faith.
Unfair Business Haw. Rev. Stat. The act prohibits unfair methods of
Practices Act §§480-2 et seq. competition in commerce or trade. Actions
must be brought by the state attorney gen-
eral or consumer protection office. Private
actions are available.28
Uniform Haw. Rev. Stat. Remedies include injunctive relief, mone-
Deceptive Trade §§481A-1 et seq. tary damages, loss of profits, and attorneys’
Practices Act fees. Haw. Rev. Stat. §481-4.29
Unfair Not applicable Hawaii does not have a separate statute
Competition for unfair competition and imitation of
unregistered marks.
Common Law Not applicable Courts have recognized common law
action for unfair competition, trademark
infringement, and palming off.30 Remedies:
Damages.31
28
Hawaii Medical Ass’n. v. Hawaii Medical Service Ass’n., Inc., 148 P.3d 1179
(Haw. 2006).
29
Carrington v. Sears, Roebuck & Co., 683 P.2d 1220 (Haw. App. 1984).
30
Famolare, Inc. v. Melville Corp., 472 F. Supp. 738 (D. Haw. 1979), aff’d 652
F.2d 62 (9th Cir. 1981).
31
Cieri v. Leticia Querry Realty, Inc., 905 P.2d 29 (Haw. 1995).
IDAHO
Trademark Idaho Code §§48- A trademark registration is required for a
Registration 502 et seq. party to sue for trademark counterfeiting
or infringement in Idaho. Idaho Code
§ 48-512. Remedies: Injunctive relief,
seizure, and destruction of infringing
articles, profits, or damages if the infringe-
ment was committed with intent to
cause confusion or mistake. The court,
in its discretion, may enter judgment
for an amount not to exceed three times
such profits and damages and may award
reasonable attorney’s fees and costs of suit
Revision: to the prevailing party in cases where the
Idaho Code court finds the other party committed the
§48-510 wrongful acts with knowledge or in bad
faith or otherwise, as the circumstances
of the case may warrant. Idaho Code §§
48-511 to 514.
Removed: “Applications for renewal shall
be filed using the classification of goods
and services in effect when the trademark
was approved by the secretary of state;
provided that a registrant may request a
renewed registration to be issued under the
international classification of goods and
services. When such a request is made, the
secretary of state shall issue the renewed
certificate as requested by the regis-
trant if such renewal would not extend
the registrant’s rights.” Revision: “A
renewed registration shall be issued by the
secretary of state under the international
classification.”
Dilution Idaho Code §48-513 Remedies: Injunctive relief and, if willful
intent is proven, additional remedies at the
discretion of the court.
(Continued)
IDAHO
Consumer Idaho Code The Act prohibits passing off goods or
Protection Act §§48-601 et seq. services, creating a likelihood of confusion
regarding the source of origin of goods or
services, and falsely disparaging the goods or
services of another. Idaho Code § 48-603.
Actions may be brought by the Idaho Attor-
ney General or any private person who suf-
fered a loss as a result of a purchase or lease
transaction. Pursuant to an action instituted
by the Attorney General, the court may
order restitution. Remedies for actions
brought by individuals include attorneys’ fees
and the greater of $1,000 or the consumer’s
actual damages. Punitive damages are also
recoverable. Idaho Code §48-608.
Unfair Not applicable Idaho does not have a separate statute
Common Law Not applicable Idaho has recognized a common law action
for unfair competition in the trademark
context. Remedies: Injunctive relief and,
if infringement or unfair competition was
intentional, damages.
Illinois
Trademark 765 Ill. Comp. Stat. State trademark registration is required for
Registration §§1036/1 et seq. a party to sue for trademark counterfeiting
or infringement in Illinois. Remedies:
Injunctive relief and recovery of infringer’s
profits or the owner’s damages. The coun-
terfeit items may also be destroyed by order
of court. Treble damages and attorneys’
fees are available if the infringer’s actions
are done with knowledge or in bad faith.
765 Ill. Comp. Stat. §1036/70.
Dilution 765 Ill. Comp. Stat. The Act provides for injunctive relief only
§1036/65 if infringer’s conduct was willful in which
case treble damages, infringer’s profits, and
attorney’s fees may be recovered. The mark
must be “famous” in order to be protected
from dilution. The Act is extremely similar
to the Federal Dilution Act.
(Continued)
Illinois
Consumer Fraud 815 Ill. Comp. Stat. The Act protects consumers and business
and Deceptive § 505/1 et seq. persons from fraud and unfair methods of
Business Practices competition in commerce or trade. Pros-
Act ecution may be brought by the Attorney
General or a State’s Attorney for injunc-
tive relief, restitution, and a penalty not to
exceed $50,000 per violation.
Uniform 815 Ill. Comp. Stat. The Act protects against any action, which
Deceptive Trade § 510/1 et seq. tends to create a likelihood of confusion in
Practices Act the public.32 Damages include injunctive
relief, but not monetary damages. Costs
or attorneys’ fees or both may be assessed
against a defendant only if the court finds
that he has willfully engaged in a deceptive
trade practice.
Unfair Not applicable Illinois does not have a general unfair
Competition competition statute.
Common Law Not applicable Illinois courts have recognized common
law actions for unfair competition. Reme-
dies: Injunctive relief, monetary relief, and/
or defendant’s profits.
Indiana
Trademark Ind. Code §§24-2- State trademark registration is required for
Registration 1-1 et seq. a party to sue for trademark counterfeiting
or infringement in Indiana. Remedies:
Injunctive relief and awarding of all profits
derived from infringement as well as dam-
ages suffered except that profits may only
be awarded upon a showing that the acts
were committed with knowledge. State
theft of trademarks. Ind. Code §35-43-5-7.
(Continued)
National Football League Properties, Inc. v. Consumer Entertainment, Inc.,

32
327 N.E.2d 242 (Ill. App.), cert. denied 423 U.S. 1018 (1975).
Indiana
Dilution Ind. Code §24-2- This section applies only to fanciful marks,
1-13 except in cases where the other person’s
use tarnishes the reputation of the famous
mark. The owner of a famous mark in Indi-
ana is entitled to an injunction, and may
also be awarded profits and attorneys’ fees,
subject to the court’s discretion.
Unfair Not applicable Indiana does not have a general unfair
Competition competition statute.
Common Law Not applicable Indiana courts have recognized common
law actions for unfair competition in the
trademark context. Remedies: Injunctive
relief and damages.
IOWA
Trademark Iowa Code A state trademark registration is required
Registration §§548.101 et seq. for a party to sue for trademark counterfeit-
ing or infringement in Iowa. Iowa Code
§548.112. Remedies: Injunctive relief,
seizure and destruction of infringing goods,
profits and/or damages and in exceptional
cases, treble damages and attorneys’ fees.
Iowa Code §§548.101, 114.
Dilution Iowa Code §548.113 The statute provides for injunctive relief
and, if willful intent is proven, damages as
provided by Iowa Code §§548.101 et seq.
Unfair Business Not applicable Iowa does not have an unfair business
Practices Act practices act related to trademarks.
Unfair Not applicable Iowa does not have a statute prohibiting
Competition unfair competition.
Common Law Not applicable Iowa state courts recognize a common
law action of unfair competition, which
encompasses imitation of unregistered
trade names, trademarks, and palming off.
Remedies: Injunctive relief, damages, and
exemplary damages if plaintiff has suffered
more than nominal damages.
Kansas
Trademark Kan. Stat. Ann. A state trademark registration is required
Registration §81-213 for a party to sue for trademark coun-
terfeiting or infringement in Kansas.
Remedies: Injunctive relief and up to
treble damages and attorneys’ fees if bad
faith or knowledge is demonstrated. The
court may require the defendants to pay
the trademark owner all profits derived
from and all damages suffered by reason
of the wrongful acts, but only if the acts
have been committed with the intent to
cause confusion or mistake or to deceive.
The court may also order all counterfeits or
imitations be delivered up for destruction.
See Kan. Stat. Ann. §81-215.
Dilution Kan. Stat. Ann. The statute provides injunctive relief to
§81-215 prevent the dilution of marks that are
famous in the state. Courts will consider a
state or federal registration persuasive but
not necessary for a dilution claim. If willful
intent is proven, the owner shall also be
entitled to the remedies set forth in Kan.
Stat. Ann. §81-215.
Unfair Not applicable Kansas does not have a separate state stat-
Competition ute prohibiting unfair competition.
Common Law Not applicable Kansas recognizes a common law action
of unfair competition that provides for
injunctive relief.
Kentucky
Trademark Regis- Ky. Rev. Stat. Ann. A state trademark registration is required
tration §§365.561 et seq. for a party to sue for trademark coun-
terfeiting or infringement in Kentucky.
infringer’s profits or damages if the acts
have been committed with the intent to
cause confusion or mistake or to deceive,
and destruction of infringer’s goods.
Attorneys’ fees and/or treble damages
may be awarded if the infringing act was
committed in bad faith.
(Continued)
Kentucky
Dilution Not applicable Kentucky does not have a separate statute
on dilution.
Unfair Business Not applicable Kentucky does not have an unfair business
Practices Act practices act that would apply to trademark
matters.
Unfair Not applicable Kentucky does not have a separate state
Common Law Not applicable Kentucky state courts have recognized
common law actions for unfair competi-
tion. Damages include injunctive relief and
monetary damages.33
Louisiana
Trademark La. Stat. Ann. A state trademark registration is required
Registration §§51:211 et seq. for a party to sue for trademark coun-
terfeiting or infringement in Louisiana.
Remedies: Injunctive relief, seizure and
destruction of infringing goods, and profits
and/or damages if the infringement was
committed with intent to cause confusion
or mistake or to deceive. La. Stat. Ann.
§51:222(2). A state registration is not
required for the public prosecutor to bring
criminal charges for trademark
counterfeiting. La. Stat. Ann. §14:229.
Dilution La. Stat. Ann. Statute provides for injunctive relief
§51:223.1 regardless of whether mark is registered
“notwithstanding the absence of compe-
tition between the parties or the absence
of confusion as to the source of goods or
services.”
(Continued)
Covington Inn Corp. v. White Horse Tavern, Inc., 445 S.W.2d 135 (Ky.
33
1969); Churchill Downs Distilling Co. v. Churchill Downs, Inc., 90 S.W.2d

1041 (Ky. 1936).
Louisiana
Unfair Trade La. Stat. Ann. The Act does not condemn specific practices,
Practices & §§51:1401 et seq. but courts have interpreted it to prohibit a
Consumer wide variety of consumer fraud practices,
Protection Law including false designation of origin under
the Lanham Act. Remedies: Damages, resti-
tution, reasonable attorneys’ fees and costs.
Treble damages may be awarded if the court
finds that the unfair practice was conducted
knowingly. Only the state can obtain injunc-
tive relief. An award of damages for mental
anguish and humiliation is also recoverable.34
Unfair Not applicable Louisiana has not enacted a separate state
Common Law Not applicable Louisiana state courts recognize a common
law action of unfair competition, which
encompasses imitation of trade names,
trademarks, and palming off. Remedies:
Injunctive relief and damages.
Maine
Trademark 10 ME. Rev. Stat. A state trademark registration is required
Registration Ann. §§1521 et seq. for a party to sue for trademark counterfeit-
ing or infringement in Maine. Remedies:
Injunctive relief and the recovery of the
defendant’s profits and the trademark owner’s
damages. The court may also order that any
counterfeits or imitations be delivered up for
destruction. The mark owner may also “elect,
at any time before final judgment is rendered,
to recover instead of actual damages or profits
an award of statutory damages with respect
to any one mark . . . in an amount not to
exceed $2,000.” 10 ME. Rev. Stat. Ann.
§1531(2). The court shall also “award the
prevailing party costs and, in exceptional
cases only, may award the prevailing party
reasonable attorneys’ fees.” 10 ME. Rev.
Stat. Ann. §1531(3). A state registration
is not required for the public prosecutor to
bring criminal charges for theft of trademarks.
32 ME. Rev. Stat. Ann. §§4699, 4700.
(Continued)
34
Vercher v. Ford Motor Co., 527 So.2d 995 (La. App. 1998).
Maine
Dilution 10 ME. Rev. Stat. The statute provides for “injunctive relief
Ann. § 1530 notwithstanding the absence of compe-
services.”
Unfair Not applicable Maine does not have a separate state
Maine Unfair 5 ME. Rev. Stat. An aggrieved party may bring an action
Trade Practices Ann. §§206 et seq. for actual damages, restitution, and other
Act equitable relief, including an injunction.
A court may also award attorneys’ fees and
costs. 5 ME. Rev. Stat. Ann. §213.
Maryland
Trademark Md. Bus. Reg. Code A state trademark registration is required
Registration Ann. §§1-401 et seq. for a party to sue for trademark counterfeit-
ing or infringement in Maryland. Reme-
dies: Injunctive relief (§ 1-414(c)), profits,
and damages if the infringer intended that
the mark be used to confuse or deceive.
§1-414(b)(2). Destruction of infringing
goods may also be ordered. §1-414(d)
(3). Moreover, all rights available under
common law exist, so it may be argued that
nonregistered trademark holders may pro-
ceed with an infringement action. §1-402.
Dilution Not applicable Maryland does not have a separate dilution
statute.
Unfair Business Not applicable Maryland does not have an unfair business
Practices Act practices act, which would apply to
trademark matters.
Unfair Not applicable Maryland does not have a separate general
Competition statute for unfair competition, although its
Unfair Business Practices Act (Md. Com.
L. Code Ann. §§13-301 et seq.) prohibits
unfair competition.
Common Law Not applicable Maryland recognizes a common law action
for unfair competition. Remedies include
injunctive relief.35
35
Mascaro v. Snelling & Snelling of Baltimore, Inc., 243 A.2d 1 (Md. 1968).
Massachusetts
Trademark Mass. Gen. L., Ch. A state trademark registration is required
Registration 110H. for a party to sue for trademark counter-
feiting or infringement in Massachusetts.
destruction of infringing goods, profits and/
or damages if the infringement was com-
mitted with intent to cause confusion or
mistake. In its discretion, a court may enter
judgment for an amount not to exceed
three times the profits and damages and
reasonable attorneys’ fees of the prevailing
party in cases where a party committed
wrongful acts with knowledge or in bad
faith. §§12, 14. There is no separate statute
regarding criminal prohibitions on coun-
terfeiting of trademarks.
Dilution Mass. Gen. L., Ch. Statute provides for injunctive relief, “not-
110H, §13 withstanding the absence of competition
between the parties or the absence of con-
fusion as to the source of goods or services.”
Unfair Not applicable Massachusetts has not enacted a separate
Common Law Not applicable Massachusetts state courts recognize com-
mon law unfair competition.
Michigan
Trademark Mich. Comp. L. A state trademark registration is required
Registration §§429.31 et seq. for a party to sue for trademark coun-
terfeiting or infringement in Michigan.
Remedies: Injunctive relief and, if the acts
have been committed with knowledge that
the mark is intended to be used to cause
confusion or mistake or to deceive, lost
profits or damages may also be recovered.
The court may also order that any coun-
terfeits or imitations be delivered up and
destroyed. See Mich. Comp. L.§§429.42
and 429.43. A state registration is not
required for the public prosecutor to bring
criminal charges for theft of trademarks.
Mich. Comp. L.§750.263.
(Continued)
Michigan
Dilution Not applicable There is no statutory or common law
cause of action for trademark dilution in
Michigan.36
Unfair Not applicable Michigan does not have a separate state
Consumer Mich. Comp. L. Michigan’s Act protects consumers and
Protection Act §§445.901 et seq. competitors. Remedies: Damages, as well as
injunctive relief, regardless of whether the
plaintiff has an adequate remedy at law.
Common Law Not applicable Michigan recognizes a common law right
of unfair competition, which has been ana-
lyzed under the Lanham Act.37 Remedies:
Minnesota
Trademark Minn. Stat. A state trademark registration is required
Registration §§333.18 et seq. for a party to sue for trademark counter-
feiting or infringement in Minnesota.
infringer’s profits and/or owner’s damages,
if the acts have been committed with
knowledge that the mark is intended to be
used to cause confusion or mistake or to
deceive. The court may also order that the
sion or under the control of a defendant
be delivered to an officer of the court, or
to the complainant, to be destroyed. The
court, in its discretion, may enter judgment
Revision: for an amount not to exceed three times
Minn. Stat. §333.22 the profits and damages and reasonable
attorneys’ fees of the prevailing party, if the
party committed the acts with knowledge
or in bad faith.
(Continued)
36
Aero-Motive Co. v. U.S. Aeromotive, Inc., 922 F. Supp. 29 (W.D.
Mich. 1996).
37
Sports Authority, Inc. v. Abercrombie & Fitch, Inc., 965 F. Supp. 925 (E.D.
Mich. 1997). Accord, Two Men and a Truck International, Inc. v. Two Men and a
Truck Kalamazoo, Inc., 949 F. Supp. 500 (W.D. Mich. 1996).
Minnesota
Subd. 2. Renewal notice. The secretary
of state shall notify each registrant of a
mark hereunder of the necessity of renewal
thereof by writing to the last known
address of the registrant approximately six
months prior to the registration’s expira-
tion date.*
*Added text in bold.
Dilution Minn. Stat. The statute provides for injunctive relief
§333.285 only and the mark in question must be well
known or “famous.” However, if willful
intent is proven, then the owner is entitled
to other remedies such as monetary dam-
ages and/or costs.
Unfair Business Minn. Stat. (The statute is not unified, but rather a
Practices Act & §§325D, 325F compilation of several sections.)
Consumer Fraud The provisions are designed to
protect consumers and business
persons from fraud and deceit in commerce
and trade. Damages: Injunctive relief and
actual damages, if any. Minn. Stat. §325
D.09 to §325 D.16
Uniform Minn. Stat. Remedies: Injunctions, cost, and attorneys’
Deceptive Trade §§325D.44 et seq. fees.
Practices Act
Unfair Not applicable Minnesota does not have a separate statute
Competition prohibiting unfair competition related to
trademark.
Common Law Not applicable Minnesota recognizes a common
law action for unfair competition.
Remedies: Injunctive relief, punitive
damages, lost profits, and/or
attorneys’ fees.38
Minneapple Co. v. Normandin, 338 N.W.2d 18 (Minn. 1983); North Star

38
State Bank of Roseville v. North Star State Bank Minnesota, 361 N.W.2d 889
(Minn. App. 1985).
Mississippi
Trademark Miss. Code Ann. A state trademark registration is required
Registration §§75-25-1 et seq. for a party to sue for trademark counter-
feiting or infringement in Mississippi.
destruction of infringing articles, profits
and damages, except that a registrant
cannot recover profits and damages unless
the acts have been committed with the
intent to cause confusion or mistake or to
deceive. Treble damages and/or attorneys’
fees may be awarded at the discretion of
the court or where the conduct involved
was made with knowledge or in bad faith.
Miss. Code Ann. §75-25-23, 27. A state
trademark counterfeiting. Miss. Code Ann.
§§97-21-53.
Dilution Miss. Code Ann. The owner of a mark that is famous or
§75-25-25 distinct may seek injunctive relief, and
if the conduct was willful, the court has
discretion to award additional remedies.
Unfair Trade Miss. Code Ann. The Act pertains to trademark infringe-
Practices Act §§75-24-1 et seq. ment including false designation of origin
and passing off goods or services of another.
The State Attorney General may bring an
action and obtain injunctive relief, revo-
cation or suspension of a business license,
and civil penalties up to $10,000 payable
to the State. Private parties may also bring
actions after participating in an informal
dispute resolution settlement program
approved by the Attorney General. Private
parties may obtain damages.
Unfair Not applicable Mississippi does not have a separate, gen-
Competition eral statute prohibiting unfair competition.
Common Law Not applicable Mississippi state courts have recognized a
common law action for unfair competition
that encompasses imitation of trademarks
and trade names. Remedies include all
those available under general tort law.
Missouri
Trademark Mo. Rev. Stat. A state trademark registration is required
Registration §§417.005 et seq. for a party to sue for trademark counterfeit-
ing or infringement in Missouri. Remedies:
Injunctive relief, and, only if the defendant
intended to cause confusion or mistake or
to deceive, profits and damages. A state
theft of trademarks. Mo. Rev. Stat. §
570.103.
Dilution Mo. Rev. Stat. § Likelihood of injury to business reputation
417.061 or of dilution of the distinctive quality of
a registered mark or common law mark
constitutes grounds for injunctive relief
“notwithstanding the absence of compe-
services.”
Unfair Not applicable Missouri does not have a separate,
Competition general state statute prohibiting
unfair competition.
Unfair Business Mo. Rev. Stat. Missouri protects consumers and
Practices Act §§407.010 et seq. competitors. Remedies: Injunctive
relief and restitution payable to the
State. In addition, the court may
impose a penalty of not more than
$1,000 per violation.
Common Law Not applicable Missouri recognizes a common law
right of unfair competition regardless of
whether the mark is registered with the
Patent Office.39 Remedies: Injunctive
relief as well as the possibility of
punitive damages.
Dynamic Sales v. Dynamic Fastener Service, Inc., 803 S.W.2d 129 (Mo. App.
39
1990).
Montana
Trademark Mont. Code Ann. A state trademark registration is required
Registration §§30-13-301 et seq. for a party to sue for trademark counterfeit-
ing or infringement in Montana. Remedies:
Injunction, destruction of seized goods,
profits or damages, except that registrant
is not entitled to recover any profits or
damages unless the acts have been com-
mitted with knowledge that the mark is
intended to be used to cause confusion or
mistake or to deceive. Mont. Code Ann.
§30-13-333(2). The court has discretion to
award up to treble damages and reasonable
attorney fees in cases where there was
Revision: knowledge or bad faith. §30-13-335. The
Mont. Code Ann. statute specifically states that common law
§30-13-313 trademark rights are preserved. Therefore,
an owner of a nonregistered trademark may
bring an action for common law infringe-
ment. Mont. Code Ann. §30-13-336.
“(5) All applications for renewal under

this part must include a verified statement
that the mark has been and is still in use,
a specimen showing actual use of the mark
on or in connection with the goods or
services, and the following information:
(a) The original identification number
assigned by the secretary of state;
(b) The name subscribed for the mark;
(c) The name and business mailing
address of the person claiming own-
ership of the mark;
(d) if a corporation, the state of incorpo-
ration or, if a partnership, the state
in which the partnership is organized
and the names of the general part-
ners, as specified by the secretary of
state; and
(e) the class of goods or services and a
description of the goods or services
on or in connection with which the
mark is used.”*
(Continued)
Montana
Dilution Mont. Code Ann. Remedies: Injunctive relief, and if the con-
§30-13-334 duct was willful, the court has discretion to
award additional remedies.
Montana Unfair Mont. Code Ann. This Act notes that “unfair methods of
Trade Practices §§30-14-101 et seq. competition and unfair or deceptive acts
and Consumer or practices in the conduct of any trade
Protection Act or commerce are unlawful.” In the event
that a person willfully utilizes an unlawful
method, a court may impose a fine of not
more than $10,000 for each violation. The
department of justice may bring an action
for injunctive relief.
Unfair Mont. Code Ann. This Act protects the public from unfair
Competition §§30-14-201 et seq. and discriminatory practices, which would
destroy unfair competition.
Common Law Not applicable Montana recognizes a common law
action for unfair competition. Remedies:
Injunctive relief.
Nebraska
Trademark Neb. Rev. Stat. The 2000 Nebraska statute is “substan-
Registration §§87-126 et seq. tially consistent with the federal system
of trademark registration and protection.”
Neb. Rev. Stat. §87-127. State trademark
registration is required for a party to sue for
trademark counterfeiting or infringement
in Nebraska. Remedies: Injunctive relief,
seizure and destruction of infringing arti-
cles, and, if wrongful acts were committed
Revision: with knowledge or in bad faith, profits,
Neb. Rev. Stat. damages, and reasonable attorneys’ fees.
§87-130 Neb. Rev. Stat. §87-141.
Substituted “or other type of business

entity except a partnership, the state of
Neb. Rev. Stat. incorporation or organization” for “the
§87-132 state of incorporation” in subd. (1).
Substituted “or other type of business
entity except a partnership, the state of
incorporation or organization” for “the
state of incorporation.”
(Continued)
Nebraska
Neb. Rev. Stat. Rewrote subsec. (2) and added subsec. (6)
§87-134
Section 2:
(2)(a) Any registrant or applicant effecting

a change of the name of the person to
whom the mark was issued or for whom
an application was filed or a change of
address or state of incorporation or
organization may record a certificate of
such change with the secretary upon the
payment of the recording fee. A registrant
or an applicant may be required to submit
documented proof of its name change at
the discretion of the secretary.*
(b) The secretary may issue in the name of

the assignee a certificate of registration of
an assigned application. The secretary may
issue in the name of the assignee a new cer-
tificate of registration for the remainder of
the term of the registration or last renewal
of the registration.
Section 6:
(6) In a registration that resulted from an

application that was filed before the effec-
tive date of a change to the Trademark
Registration Act or any rules or regulations
adopted and promulgated pursuant to the
act, the registrant may be allowed to file an
amendment to the registration in order to
comply with the current requirements of
the act and the rules and regulations. The
registrant shall pay a recording fee for such
amendment.
Dilution Neb. Rev. Stat. The statute provides for injunctive relief
§87-140 for a famous mark unless willful dilution is
proven, in which case the owner is entitled
to all other remedies under the Trademark
Registration Act.
(Continued)
Nebraska
Consumer Neb. Rev. Stat. The Act is drafted broadly and prohibits
Protection Act §§59-1601 et seq. unfair methods of competition, as well as
restraint of trade and monopolies. The
State Attorney General may bring an
action for injunctive relief and
obtain civil fines up to $25,000.
The Act also provides for a private
right of action of which the remedies
include injunctive relief, damages, costs,
and attorneys’ fees. The court may also
increase the damages award up to $1,000 at
its discretion.
Uniform Neb. Rev. Stat. According to the Act, passing off goods
Deceptive Trade §§87-301 et seq. or services as those of another or causing
Practices Act the likelihood of confusion as to source
of goods or services constitutes deceptive
trade practices. Remedies: Injunctive relief.
Proof of monetary damages, loss of profits,
or intent to deceive is not required. Unless
the court otherwise directs, costs shall
be allowed to the prevailing party. The
Attorney General may also bring an action
for injunctive relief. A civil penalty of no
more than $2,000 may be assessed for each
violation.
Unfair Not applicable Nebraska does not have a separate, general
Common Law Not applicable Nebraska state courts recognize

a common law action for unfair
competition, which encompasses
imitation of trademarks. Remedies
include injunctive relief and monetary
damages.40
ADT Security Services, Inc. v. A/C Security Systems, Inc., 736 N.W.3d 737
40
(Neb. App. 2007).

Nevada
Trademark Nev. Rev. Stat. State trademark registration is required for
Registration §§600.240 et seq. a party to sue for trademark counterfeiting
or infringement in Nevada. Remedies:
Injunctive relief and an award of the
defendant’s profits and all damages suffered
by the trademark owner, except registrant
is not entitled to profits or damages unless
the act was committed with knowledge
that the counterfeit was intended to
be used to cause confusion, mistake, or
deception. The court may order that
the “defendant pay to the owner treble
damages on all profits derived from the
willful and wrongful acts of defendant and
treble damages on all damages suffered by
reason of these acts.” The court may also
order that any counterfeits or imitations be
delivered up for destruction. Nev. Rev. St.
§§600.420, 600.430. A state registration is
not required for criminal prosecution for
counterfeiting under §205.205, or for dis-
playing goods with a false trademark under
§205.210, as long as the exclusive right to
use the trademark is guaranteed under the
laws of the United States.
Dilution Nev. Rev. Stat. Statute provides for injunction relief and
§600.435 the mark must be famous. If willful intent
is proven, then additional remedies under
§600.430 are available.
Unfair Not applicable Nevada does not have a separate state
Deceptive Trade Nev. Rev. Stat. Nevada’s Act protects consumers and com-
Practices Act §§598.0903 et seq. petitors. The Attorney General may bring
an action for equitable relief. If a court
finds that a person has willfully engaged in
a deceptive trade practice, the state may
exact a penalty of no more than $5,000 for
each violation.
Common Law Not applicable Nevada recognizes a common law action
for unfair competition, which provides the
same remedies under the Lanham Act.41
Wells Fargo & Co. v. Wells Fargo Express Co., 358 F. Supp. 1065 (D. Nev.
41
1973), vacated on other grounds 556 F.2d 406 (9th Cir. 1977).
New Hampshire
Trademark N.H. Rev. Stat. State trademark registration is required
Registration Ann. §§350-A:1 for a party to sue for trademark
et seq counterfeiting or infringement in New
Hampshire. Remedies: Injunctive relief
and recovery of infringer’s profits and/or
the owner’s damages and costs, which the
registrant shall not be entitled to recover
profits or damages against a party who
reproduces the mark, unless the acts have
been committed with knowledge that such
mark is intended to be used to cause con-
fusion or mistake or to deceive. N.H. Rev.
Stat. Ann. §§350-A:11, 13. Destruction
or disposition of infringed goods may also
be ordered.
Dilution N.H. Rev. Stat. “Likelihood of injury to business
Ann. §350-A:12 reputation or of dilution of the
distinctive quality of a mark registered
under this chapter, or a mark valid at
common law, or a trade name valid at
common law, shall be a ground for
injunctive relief notwithstanding the
absence of competition between the parties
or the absence of confusion as to the source
of goods or services.”
Unfair Business N.H. Rev. Stat. The Act prohibits unfair or deceptive
Practices Act Ann. §§358-A:1 practices in trade and commerce.
et seq. A private action under this section
may be based upon passing off,
causing confusion and/or false
representations. The statute provides
remedies for actual damages, equitable
relief, injunctive relief, and, if a violation
was willful, treble damages. Minimum
statutory damages are $1,000. Costs and
attorneys’ fees shall also be awarded.
§358-A:10.
Common Law Not applicable New Hampshire has a common law claim
for unfair competition.
New Jersey
Trademark N.J. Stat. Ann. Registration in the state or with the
Registration §§56.3-13.1a et seq. U.S. Patent & Trademark Office is
required for a party to sue for trademark
counterfeiting or infringement in New
Jersey. Remedies: Injunctive relief,
seizure and destruction of infringing
articles, and, provided that intent to
cause confusion or mistake or to deceive
is shown, profits and/or damages. Treble
damages, attorney’s fees and costs may be
awarded if bad faith or egregiousness is
proven. §56:3-13.16.
Consumer Fraud N.J. Stat. Ann. This Act is drafted broadly and
Act §§56:8-1 et seq. prohibits deceptive practices.
The State Attorney General may
bring an action for injunctive relief
and restitution and a penalty of not
more than $10,000 may be imposed
for the first offense and not more than
$20,000 for the second and each
subsequent offense. The Act also
provides for a private right of action.
Remedies: Injunctive relief, damages,
(however, the owner or designee shall not
be entitled to recover profits or damages
unless the conduct has been committed
with the intent to cause confusion or
mistake or to deceive), costs and attorney’s
fees, and treble damages.
Unfair N.J. Stat. Ann. New Jersey’s unfair competition statute
Competition §§56:4-1 et seq. prohibits the appropriation by a merchant,
firm, or corporation deals. Remedies:
Injunctive relief, damages, and discretion-
ary treble damages.
Common Law Not applicable New Jersey state courts recognize common
law actions for unfair competition, which
encompasses imitation of trademarks and
passing off. Remedies: Injunctive relief,
damages, profits, attorneys’ fees, and
treble damages.
New Mexico
Trademark N.M. Stat. Ann. A state trademark registration is required
Registration §§57-3B-1 et seq. for a party to sue for trademark
counterfeiting or infringement in
New Mexico. Remedies: Injunctive
relief and an award of all profits derived
from, or all damages suffered by reason of,
the counterfeit or imitation of the
registered mark. See §57-3B-14 and
§57-3B-16. However, the registrant
of the mark may only recover profits or
damages if the “acts have been
committed with the intent to cause
confusion or mistake or to deceive.”
§57-3B-14(B). The court may also order
that any counterfeits or imitations be
delivered up for destruction. Additionally,
the court, “in its discretion, may enter
judgment for an amount not to exceed
three times the profits and damages and for
reasonable attorney fees of the prevail-
ing party . . . where . . . the other party
committed the wrongful acts with knowl-
edge or in bad faith or as otherwise the
circumstances of the case may warrant.”
§57-3B-16.
Dilution N.M. Stat. Ann. The statute provides for only injunctive
§57-3B-15 relief unless willful intent is proven, in
which case the mark owner shall also be
entitled to the remedies set forth in the
Trademark Act. N.M. Stat. Ann. §§57-3-1
et seq.
Unfair Not applicable New Mexico does not have a separate
Competition state statute prohibiting unfair
competition.
Common Law Not applicable New Mexico recognizes a common law
right of unfair competition, which includes
injunctive relief.
New York
Trademark N.Y. Gen. Bus. L. A state trademark registration is
Registration §§360-aet seq. required for a party to sue for
trademark counterfeiting or infringement
in New York. Remedies include
injunctive relief, seizure and
destruction of infringing articles,
and profits and/or damages. Treble
damages, attorneys’ fees and costs
may be awarded if knowledge or bad
faith is proven. State registration is
not required for a public prosecutor
to bring criminal charges for
trademark counterfeiting. Penal L.
§§165.71-165.73.
Dilution N.Y. Gen. Bus. L. The statute only allows for injunctive
§360-1 relief.
Consumer N.Y. Gen. Bus. L. The Act is broadly drafted and prohibits
Protection from §349 deceptive acts or practices in the conduct
Deceptive Acts of any trade or business. The State
and Practices Act Attorney General may bring an
action for injunctive relief and restitution.
The Act also provides for a private
right of action. Remedies: Injunctive relief
and actual damages or $50, whichever is
greater. The court has discretion to treble
the damages up to $1,000 and award
attorney’s fees if the defendant acted
willfully or knowingly in violating the
statute.
Unfair Not applicable New York has no unfair competition
Competition statute concerning trademarks.
Common Law Not applicable New York state courts recognize common
law actions of unfair competition for trade-
mark, trade dress, and trade name infringe-
ment.42 Remedies include injunctive relief,
damages, and profits.
42
ITC Ltd. v. Punchgini, Inc., 9 N.Y.3d 467 (N.Y. App. 2007).
North Carolina
Trademark N.C. Gen. Stat. Under North Carolina’s Trademark Reg-
Registration §§80-1 et seq. istration Acts registration is required for a
party to sue for trademark counterfeiting
or infringement in North Carolina. The
statute for infringement, § 80-11, does not
provide for specific remedies, except that a
registrant shall not be entitled to recover
profits or damages or any penalty unless the
acts have been committed with knowledge
that such mark is intended to be used to
cause confusion or mistake or to deceive.
However, the statute does refer to the rem-
edies available under the Unfair Business
Practices Act, §75-11.
Dilution Not applicable North Carolina does not have a separate
statute for dilution.
Unfair Business N.C. Gen. Stat. “Unfair methods of competition in or
Practices Act §75-1.1 affecting commerce, and unfair or deceptive
acts or practices in or affecting commerce,
are declared unlawful.” Remedies: Injunctive
relief, actual damages, and, in the court’s dis-
cretion, treble damages and attorney’s fees.
Common Law Not applicable Unfair competition exists as a common law
cause of action in North Carolina.43
North Dakota
Trademark N.D. Cent. Code. A state trademark registration is required
feiting or infringement in North Dakota.
Remedies: Injunctive relief and an award
of defendant’s profits and the mark owner’s
damages, except that the registrant shall
not be entitled to recover profits or dam-
ages under § 47-22-11(2), “unless the acts
have been committed with knowledge that
such trademark is intended to be used to
cause confusion or mistake or to deceive.”
A state registration is not required for the
public prosecutor to bring criminal charges
for theft of trademarks. §51-07-04.
(Continued)
43
Polo Fashions, Inc. v. Gordon Group, 627 F. Supp. 878 (M.D.N.C. 1985).
North Dakota
Dilution Not applicable North Dakota does not have a separate
statute for dilution.
Unfair Business N.D. Cent. Code North Dakota’s Act primarily regulates
Practices Act §§51-10-01 et seq. restraints of trade and monopolies.
Unfair Not applicable North Dakota does not have a separate
Common Law Not applicable North Dakota recognizes a common law
right of unfair competition, which provides
remedies including injunctive relief.44
OHIO
Trademark Ohio Rev. Code A state trademark registration is required for
Registration Ann. § 1329.54 a party to sue for trademark counterfeiting or
et seq. infringement in Ohio. §1329.66. Remedies:
Seizure and destruction of infringing articles,
profits, and/or damages. If the infringement
complained of is part of a paid advertisement
in a periodical and constitutes innocent
infringement, then the owner of the right
infringed may only seek injunctive relief.
Dilution Not applicable Ohio does not have a separate statute for
dilution. However, common law dilution
exists.45
Unfair Business Not applicable Ohio does not have an unfair business
Practices Act practices act, which would be applicable to
trademarks.
Uniform Ohio Rev. Code The Act prohibits businesses and individ-
Deceptive Trade Ann. §§4165.01 uals from any deceptive trade practices.
Practices Act et seq. Remedies: Injunctive relief, attorneys’ fees,
and actual damages.46
Unfair Not applicable Ohio does not have a separate statute
Common Law Not applicable Ohio recognizes the common law right of
unfair competition. Remedies: Injunctive
relief, attorneys’ fees, and compensable
damages.47
44
Burris Carpet Plus, Inc. v. Burris, 785 N.W.2d 164 (N.D. 2010).
45
Ameritech, Inc. v. American Information Technologies Corp., 811 F.2d 960
(6th Cir. 1987).
46
Yocono’s Restaurant, Inc. v. Yocono, 651 N.E.2d 1347 (Ohio App. 1994).
47
Cesare v. Work, 520 N.E.2d 586 (Ohio App. 1987).
Oklahoma
Trademark 78 Okla. Stat. Ann. Injunctive relief, seizure and destruction
Registration §§21 et seq. of infringing articles, and profits and/or
damages. §32. Under §31(b), the registrant
shall not be entitled to recover profits or
damages unless the acts have been commit-
ted with knowledge that such trademark is
intended to be used to cause confusion or
mistake or to deceive.
Dilution Not applicable Oklahoma does not have a dilution statute.
Consumer 15 Okla. Stat. Ann. This Act enumerates a broad range of
Protection Act §§751 et seq. prohibited activities. The State Attorney
General or district attorney can bring an
action for damages and penalties. The Act
also provides for a private right of action
with remedies including damages, costs,
and attorneys’ fees.
Deceptive Trade 78 Okla. Stat. Ann. The statute protects individuals and busi-
Practices Act §§51 et seq. nesses, and provides for injunctive relief as
well as actual damages.
Unfair Not applicable Oklahoma does not have a statute for
Competition unfair competition.
Common Law Not applicable State courts recognize common law actions
for trademark, trade dress, and trade name
infringement. Remedies: Injunctive relief,
damages, and profits.
Oregon
Trademark Ore. Rev. Stat. A state trademark registration is required
Registration Ann. §§647.005 for a party to sue for trademark counterfeit-
et seq. ing or infringement in Oregon. Remedies:
Injunctive relief, profits and damages, seizure
and destruction of counterfeits or imitations
in the defendant’s possession. Ore. Rev.
Stat. Ann. §647.105. If the defendant has
acted in bad faith or with knowledge, then
the court may enter a judgment up to three
times the sum of the defendant’s profits, the
owner’s damages, and reasonable attorneys’
fees. However, the registrant is not entitled
to recover profits or damages unless the acts
were committed “with the intent to cause
confusion or mistake or to deceive.” Ore.
Rev. Stat. Ann. §647.095(2).
(Continued)
Oregon
Dilution Ore. Rev. Stat. The statute provides for injunctive relief
Ann. §647.107 notwithstanding the absence of competi-
tion between the parties or the absence of
confusion as to the source of goods or ser-
vices. If the defendant willfully intended to
cause dilution of the mark, then the owner
is entitled to other remedies provided in
the chapter. See Ore. Rev. Stat. Ann.
§§647.005 et seq.
Unfair Not applicable Oregon has no specific unfair competition
Competition statute.
Unlawful Trade Ore. Rev. Stat. Oregon’s Act protects consumers and
Practices Act Ann. competitors.48 Remedies: Injunctive relief
§§646.605-646.656 as well as actual damages or $200, which-
ever is greater. The court may also award
punitive damages and such equitable relief
as it deems necessary. Ore. Rev. Stat.
Ann. §646.638.
Common Law Not applicable Oregon recognizes a common law right of
unfair competition.49
Pennsylvania
Trademark 54 Pa. Consol. Stat. A state trademark registration is required
Registration §§1101 et seq. for a party to sue for trademark counter-
feiting or infringement in Pennsylvania.
§§1123, 1125. Remedies include injunctive
relief and recovery of infringer’s profits
and/or the owner’s damages and destruc-
tion of infringer’s goods. Lost profits may
be limited to those cases where acts were
committed with knowledge that such mark
was intended to cause confusion, mistake,
or to deceive. In the event a court finds
that the defendant has acted in bad faith
or with knowledge, that court, in its discre-
tion, may enter a judgment for an amount
not to exceed three times such profits and
damages and/or reasonable attorneys’ fees.
(Continued)
48
See, e.g., Meridian Transportation Resources, LLC v. Magic Carrier Resources,
LLC, 518 F. Supp.2d 1255 (D. Or. 2007).
49
Dial Temporary Help Service, Inc. v. Shrock, 946 F. Supp. 847 (D. Ore. 1996).
Pennsylvania
Dilution 54 Pa. Consol. Stat. If the mark in question is famous, the stat-
§1124 ute provides for injunctive relief. If willful
intent is proven, then additional remedies
are available subject to the discretion of
the court.50
Unfair Trade 73 Pa. Consol. Stat. This Act prevents unfair methods of
Practices and §§201-1 et seq. competition and unfair or deceptive acts or
Consumer practices such as: “(i) Passing off goods or
Protection Law services as those of another;
(ii) Causing likelihood of confusion or of
misunderstanding as to the source,
sponsorship, approval or certification
of goods or services.” The Attorney
General or District Attorney may seek
injunctive relief to restrain such practices.
The Act provides a private right of action
to recover actual damages or $100,
whichever is greater. In its discretion,
the court may award up to three times
the actual damages sustained, but not less
than $100. The court may also
award additional relief including costs and
reasonable attorneys’ fees.51 A civil penalty
of not more than $5,000 may be assessed
per violation.
Common Law Not applicable Owners of unregistered trademarks
may still pursue civil remedies based
upon common law. §1126.52
Pennsylvania recognizes common
law unfair competition, including
remedies for infringement of
trademarks. Remedies include
injunctive relief and damages.
50
Hershey Foods Corp. v. Mars Inc., 998 F. Supp. 500 (M.D. Pa. 1998).
51
Limited by In re Abramson, Bankruptcy, 313 B.R. 195, 198 (W.D Pa. 2004)
(finding that once a debtor is in bankruptcy, a debtor’s remedies to attack an
allegedly inflated proof of claim are limited to those in the Bankruptcy Code).
52
Bicentennial Commission v. Olde Bradford Co., 365 A.2d 172 (Pa. Comm.
1976).
Puerto Rico
Trademark 10 P.R. L. Ann. A state trademark registration is required
Registration §223w for a party to sue for trademark counter-
feiting or infringement in Puerto Rico.
Remedies include injunctive relief, seizure
of infringing articles, and damages. In its
discretion, the court may award damages
up to three times the profits of the defen-
dant and/or loss of the plaintiff when the
violation was intentional or in bad faith.
Dilution 10 Laws P.R. L. The statute provides for injunctive relief with
§223y respect to famous marks. If the defendant had
the intention of causing dilution, then the
owner will also be entitled to the remedies
including actual and statutory damages,
profits, destruction of the infringing goods,
and cancellation of the infringing mark.
Consumer 10 P.R. L. Ann. Puerto Rico’s Act primarily regulates
Protection Act §§257 et seq. restraints of trade and monopolies. It
declares unfair methods of competition
and unfair or deceptive acts or practices in
trade or commerce to be unlawful.
Unfair Not applicable Puerto Rico does not have a separate
Competition statute for unfair competition.
Common Law Not applicable Local courts recognize common law actions
for trademark, trade dress, and trade name
infringement. Remedies: Injunctive relief,
damages, and attorneys’ fees.
Rhode Island
Trademark R.I. Gen. L. §§6-2-1 A state trademark registration is required
Registration et seq. for a party to sue for trademark counter-
feiting or infringement in Rhode Island.
Remedies include injunctive relief, destruc-
tion of all counterfeits, and awarding of all
profits derived from infringement as well
as damages suffered except that profits may
only be awarded upon a showing that the
acts were committed with knowledge. A
state registration is not required for the
public prosecutor to bring criminal charges
for theft of trademarks. §11-17-13.
(Continued)
Rhode Island
Dilution R.I. Gen. L. §6-2-12 The statute provides for injunctive relief
notwithstanding the absence of competition
between the parties or the absence of confu-
sion as to the source of goods or services.
Unfair Not applicable Rhode Island does not have a separate,
Competition general state statute prohibiting unfair
competition.
Deceptive Trade R.I. Gen. L. § Rhode Island’s statute provides for a
Practices Act 6-13.1-1 et seq. private right of action, but not for com-
petitors.53 The statute declares that “[u]
nfair methods of competition and unfair or
deceptive acts or practices in the conduct
of any trade or commerce are declared
unlawful.” A consumer may recover actual
damages or $200, whichever is greater. The
court may, in its discretion, award punitive
damages and may provide other equitable
relief that it deems necessary or proper.
Common Law Not applicable Rhode Island recognizes a common law
right of unfair competition. Remedies:
Injunctive relief.
South Carolina
Trademark S.C. Code Ann. A state trademark registration is required
Registration §§39-15-1105 for a party to sue for trademark counter-
et seq. feiting or infringement in South Carolina.
§39-15-1170. Remedies include injunctive
relief, destruction of infringing articles,
profits, or damages, except that the
registrant may only be entitled to recover
profits or damages unless the acts have
been committed with the intent to cause
confusion or mistake or to deceive. The
court has discretion to award treble dam-
ages in cases where there was knowledge or
bad faith. S.C. Code Ann. §§39-15-1160,
39-15-1170.
(Continued)
53
See ERI Max Entertainment v. Streisand, 690 A.2d 1351 (R.I. 1997) (dismissing
this cause of action for lack of standing where a competitor had sued under this Act).
South Carolina
Dilution S.C. Code Ann. If the mark is “famous,” then the remedies
§39-15-1165 are limited to injunctive relief. If the acts
were committed willfully, remedies may
include damages, profits, and destruction
of goods.
Unfair Trade S.C. Code Ann. The act is designed to protect against
Practices Act §§39-5-10 et seq. unfair and deceptive acts in any trade or
commerce. Remedies: Actual damages and,
if the acts were willful, treble damages.
Unfair Not applicable South Carolina does not have a separate,
Competition general state statute prohibiting unfair
competition.
Common Law Not applicable South Carolina recognizes a common law
right of unfair competition. Remedies:
Injunctive relief and actual damages.54
South Dakota
Trademark S.D. Codif. L. §§37- A state trademark registration is required for
Registration 6-1 et seq. a party to sue for trademark counterfeiting
or infringement in South Dakota. Remedies:
Injunctive relief and seizure and destruction
of infringing articles. Profits and/or damages
are recoverable if the acts were commit-
ted with the intent to cause confusion or
mistake or to deceive. §37-6-26.
Dilution Not applicable South Dakota does not have a dilution
statute.
Deceptive S.D. Codif. L. §§37- The Act prohibits the use of deceptive acts
Trade Practices 24-1 et seq. or practices in the conduct of a business.
and Consumer The State Attorney General may bring an
Protection Act action for an injunction and for restitution.
§§37-24-23, 37-24-29. Private actions are
also allowed for actual damages suffered.
§37-24-31.
Common Law Not applicable South Dakota courts recognize common
law actions for trademark, trade dress,
and trade name infringement. Remedies:
Injunctive relief, damages, and lost profits.
54
Taylor v. Hoppin’ Johns, Inc., 405 S.E.2d 410 (S.C. App. 1991).
Tennessee
Trademark Tenn. Code Ann. A state trademark registration is required
feiting or infringement in Tennessee.
Remedies: Injunctive relief, destruction
of goods, and profits and/or damages,
except that profits or damages may only be
awarded upon a showing that the acts were
committed with intent to cause confusion,
mistake, or deception. The court, in its
discretion, may award treble damages and/
Revision: or reasonable attorneys’ fees in such cases
Tenn. Code Ann. where there was knowledge or bad faith
§47-25-503(e) or otherwise as according to the circum-
stances of the case. Tenn. Code Ann.
§§47-25-512, 47-25-514.
In subsection (e), “one (1) specimen” is
substituted for “three (3) specimens.”
Dilution Tenn. Code Ann. The statute provides for protection of
§47-25-513 marks famous in the state. Remedies:
Injunction, unless willfulness is shown, in
which case the same remedies are available
under trademark infringement.
Unfair Not applicable Tennessee does not have a separate statute
Common Law Not applicable Tennessee recognizes a common law right
of unfair competition, which provides for
remedies similar to those provided under
the Lanham Act.
Texas
Trademark Revision: Amended:
Registration Bus. & C. §16.001 (1) “Applicant” means the person apply-
General Provisions ing for registration of a mark under
this chapter and includes his legal
representative, successor, assignee, and
predecessor in title to the mark sought
to be registered.
(5) “Mark” includes a trademark or service
mark that is registrable under this
chapter, regardless of whether the
trademark or service mark is actually
registered.*
(Continued)
Texas
Added definitions for:
(2) “Dilution” means dilution by blurring
or dilution by tarnishment, without
regard to the presence or absence of:
(A) competition between the
owner of a famous mark and
another person;
(B) actual or likely confusion, mis-
take, or deception; or
(C) actual economic harm.
(3) “Dilution by blurring” means an
association arising from the similarity
between a mark or trade name and a
famous mark that impairs the famous
mark’s distinctiveness.
(4) “Dilution by tarnishment” means an
association arising from the similarity
between a mark or trade name and a
famous mark that harms the famous
mark’s reputation.
(6) “Person,” with respect to the applicant
or another person who is entitled to
a benefit or privilege or is rendered
liable under this chapter, includes:
(A) a natural person; and
(B) a firm, partnership, corporation,
association, union, or other orga-
Bus. & C. §16.002 nization that may sue or be sued
in that capacity.
(7) “Registrant” means the person to
whom a registration of a mark has
been issued under this chapter. The
term includes the person’s legal repre-
sentative, successor, or assignee.
Created in 2012:
Bus. & C. §16.003 “(a) This chapter does not apply to the
registration or use of a livestock brand or
other indicia of ownership of goods that do
Bus. & C. §16.004 not qualify as a mark.”
Added in 2013:
“(b) Except as provided by this subsection,
a trade name is not registrable under this
chapter. If a trade name is also a service
mark or trademark, the trade name is regis-
trable as a service mark or trademark.”
(Continued)
Texas
Added:
“(c) Use of a mark made merely to reserve
a right in the mark is not considered to be
Registration Bus. & C. §16.058 a bona fide use of a mark for purposes of
of Mark this chapter.”
Bus. & C. §16.066 Added:
(a) A mark is considered to be abandoned
when:
(1) the mark’s use has been discon-
tinued with intent not to resume
the use; or
(2) the owner’s conduct, including
an omission or commission of an
act, causes the mark to lose its
significance as a mark.
(b) Intent not to resume use of a mark
under Subsection (a)(1) may be
inferred from the circumstances.
(c) Nonuse of a mark as described by Sub-
section (a)(1) for three consecutive
years constitutes prima facie evidence
of the mark’s abandonment.
Increased Requirements:
(a) If the application complies with the
requirements of this chapter, the secre-
tary of state shall cause a certificate of
registration to be issued and delivered
to the applicant.
(b) The certificate of registration must:
(1) be signed by the secretary of state;
(2) be issued under the secretary of
state’s official seal;
(3) indicate the name and business
address of the person claiming
ownership of the mark;
(4) if the applicant is a corporation,
indicate the state under whose
laws the applicant was incorpo-
rated or organized;
(5) if the applicant is a partnership,
indicate the state under whose
laws the partnership was organized
and the names of the general
partners;
(Continued)
Texas
(6) include a description of the goods
or services on or in connection
with which the mark is being
used;
(7) state the class of the goods or
services;
(8) state the date claimed for the first
use of the mark anywhere;
(9) state the date claimed for the first
use of the mark in this state;
(10) show a reproduction of the mark;
(11) state the registration date; and
(12) state the term of the registration.
Added:
(a) The secretary of state by rule shall
prescribe the amount of fees payable
for the various applications and for the
filing and recording of those applica-
tions for related services.
(b) Unless specified otherwise by the sec-
retary of state, a fee under this chapter
is not refundable.
Enforcement V.T.C.A., Bus. & C. A state trademark registration is required
§§16.101 et seq. for a party to sue for trademark counterfeit-
ing or infringement in Texas. Remedies:
Injunctive relief, damages, and destruction
of all infringing counterfeits or imitations
in the possession or under the control
of the violator. If a court finds that the
violator acted with knowledge or in bad
faith, it may enter judgment in an amount
not to exceed three times the amount of
profits and damages and award reasonable
attorneys’ fees.
Dilution V.T.C.A., Bus. & Provides protection for famous marks.
C. §16.103 Remedies: Injunctive relief, and, if willful
intent to cause dilution of the famous
mark is shown, all other remedies available
under trademark infringement subject to
the court’s discretion and principles of
equity.
(Continued)
Texas
Revision: (a) Subject to the principles of equity,
the owner of a mark that is famous
and distinctive, inherently or through
acquired distinctiveness, in this state
is entitled to enjoin another person’s
commercial use of a mark or trade
name that begins after the mark has
become famous if use of the mark
or trade name is likely to cause the
dilution of the famous mark.
(b) For purposes of this section, a mark is
considered to be famous if the mark
is widely designation of source of the
goods or services of the mark’s owner. In
determining whether a mark is famous,
a court may consider factors including:
(1) the duration, extent, and geo-
graphic reach of the advertisement
and publicity of the mark in this
state, regardless of whether the
mark is advertised or publicized by
the owner or a third party;
(2) the amount, volume, and geo-
graphic extent of sales of goods or
services offered under the mark in
this state;
(3) the extent of actual recognition of
the mark in this state; and
(4) whether the mark is registered in
this state or in the United States
Patent and Trademark Office.
(c) In an action brought under this section,
the owner of a famous mark is entitled
to injunctive relief throughout the
geographic area in this state in which
the mark is found to have become
famous before the use of the other
mark. If the court finds that the person
against whom the injunctive relief is
sought willfully intended to cause the
dilution of the famous mark, the owner
shall also be entitled to remedies under
this chapter, subject to the court’s
discretion and principles of equity.
(Continued)
Texas
(d) A person may not bring an action
under this section for:
(1) a fair use, including a nominative
or descriptive fair use, or facilitation
of the fair use, of a famous mark by
another person other than as a des-
ignation of source for the person’s
own goods or services, including a
fair use in connection with:
(A) advertising or promoting that
permits consumers to com-
pare goods or services; or
(B) identifying and parodying,
criticizing, or commenting on
the famous mark owner or the
famous mark owner’s goods or
services;
(2) a noncommercial use of the mark; or
(3) any form of news reporting or
commentary.
Forum for Actions Revision: (a) An action to require cancellation of a
Bus. & C. §16.106 mark registered under this chapter or
in mandamus to compel registration
of a mark under this chapter shall be
brought in a district court of Travis
County. In an action to compel regis-
tration of a mark, the proceeding must
be based solely on the record before
the secretary of state.
(b) In an action for cancellation, the sec-
retary of state may not be made a party
to the proceeding but shall be notified
of the filing of the complaint by the
clerk of the court in which the action
is filed and shall be given the right to
intervene in the action.
(c) In an action brought against a nonres-
ident registrant, service may be made
on the secretary of state as agent for
service of process of the registrant in
accordance with the procedures estab-
lished for service on foreign corpora-
tions and business entities under the
Business Organizations Code.
(Continued)
Texas
Deceptive Trade V.T.C.A., Bus. & C. The Act is designed to protect against
Practices— §§17.41 et seq. deceptive acts in trade or commerce.
Consumer The Act specifically lists 24 “per se”
Protection Act violations of deceptive acts. They
include, among others, passing off goods
of another and causing confusion as
to the source of such goods. Remedies:
Injunctive relief, economic damages
(the trier of fact may award not more
than three times the amount of economic
damages; or if the trier of fact finds the
conduct was committed intentionally,
the consumer may recover damages
for mental anguish, as found by the
trier of fact, and the trier of fact may
award not more than three times the
amount of damages for mental anguish
and economic damages), and other
relief to be determined by the Court.55
Tex. Bus. & Com. Code §17.50. The
Act does not apply to business consum-
ers who have over $25 million in assets.
§17.45(4).
Unfair Not applicable Texas does not have a separate statute
Common Law Not applicable Texas has recognized the common
law right of unfair competition.
Remedies: Damages, injunctions,
lost profits, and punitive
damages.56
55
Duncan v. Luke Johnson Ford, Inc., 603 S.W.2d 777 (Tex. 1980).
56
Miller v. Lone Star Tavern, Inc., 593 S.W.2d 341 (Tex. Civ. App. 1979).
Utah
Trademark Utah Code Ann. A state trademark registration is required
Registration §§70-3a-101 et seq. for a party to sue for trademark counter-
feiting or infringement in Utah. Remedies
include an injunction, profits or damages
(except that the registrant may not be able
to recover profits or damages unless there
was intent to cause confusion, mistake, or
to deceive), destruction of goods, and where
the other party committed the wrongful act
with knowledge or in bad faith or otherwise
within the discretion of the court as accord-
ing to the circumstances of the case, treble
damages, and attorneys’ fees. Utah Code
Ann. §§70-3a-402, 70-3a-404.
(1) The registration of a mark under this

Revision: chapter expires five years after the date
Utah Code Ann. the division certifies the registration
§70-3a-305 under Section 70–3a–304.
(2) A registration may be renewed for an
additional five years from the date a
registration expires if the registrant:
(a) files an application with the
division:
(i) at least no sooner than six months

before the expiration of the
registration and no later than six
months after the expiration of the
registration*; and
(ii) in accordance with the require-
ments made by rule by the division:
(A) pursuant to Section
70–3a–201; and
(B) consistent with this section;
and
(b) pays a renewal fee determined by
the division in accordance with
Section 70–3a–203.
(3) If a registrant complies with this

section, the registrant may renew a
mark at the expiration of each five-
year term.
(Continued)
Utah
(4)(a) A registration in effect before May
06, 2002:
(i) shall continue in full force and
effect for the registration’s unex-
pired term; and
(ii) may be renewed by:
(A) filing an application for
renewal with the division:
(I) within six months before
the expiration of the
registration the time
prescribed in Subsection
(2)(a)(i); and
(II) in accordance with rules
made by the division
pursuant to Section
70–3a–201; and
(B) paying the required renewal
fee determined by the
division in accordance with
Section 70–3a–203.
(b) If a registration in effect before May
06, 2002, is renewed in accordance
with this Subsection (4), the regis-
tration shall be renewed for a term of
five years.
(5) Any application for renewal under this
chapter, whether a registration made
under this chapter or a registration
made under a prior Utah statute, shall
include:
(a) a verified statement that the mark
has been and is still in use; and
(b)(i) a specimen showing actual use
of the mark on or in connection
with the goods or services; or
(ii) a verified statement that the
mark has not changed.
*Amended text in bold

Dilution Utah Code Ann. § The statute provides for protection of
70-3a-403 famous marks. Remedies: Injunction and, if
willfulness is shown, other remedies avail-
able under trademark infringement.
(Continued)
Utah
Unfair Utah Code Ann. The Act substantially regulates monopolies
Practices Act §§13-5-1 et seq. and restraints of trade and is not applicable
to trademark infringement matters.
Consumer Sales Utah Code Ann. The Act deals with consumer sales prac-
Practices Act §§13-11-1 et seq. tices, but several aspects can be applied
to trademark infringement matters. The
Division of Consumer Protection can
commence an action and obtain injunctive
relief, declaratory judgment, recovery of
actual damages sustained by complaining
consumers, and impose an administrative
fine of up to $2,500 for each violation.
Private actions are also allowed. Remedies:
Declaratory judgment, injunctive relief,
and actual damages or $2,000, whichever is
greater. Class actions are allowable under
this Act.
Unfair Utah Code Ann. Utah provides a private cause of action
Competition §§13-5a-101 et seq. against a person who engages in unfair
competition. Remedies: Actual damages,
costs and attorneys’ fees, punitive damages.
Common Law Not applicable Utah courts recognize a common law cause
of action for unfair competition, which
encompasses palming off 57 and unfairly
benefitting from the good will and reputa-
tion of another. Remedies: Injunctive relief
and damages.
Vermont
Trademark 9 Vt. Stat. Ann. A state trademark registration is required
Registration §§2521 et seq. for a party to sue for trademark counterfeit-
ing or infringement in Vermont. Remedies:
Injunctive relief and the recovery of all
profits derived from the violation. In
addition, the court may order that all
counterfeits and imitations be destroyed. A
state registration is required for the public
theft of trademarks. §2531.
(Continued)
57
Overstock.com, Inc. v. SmartBargains, Inc., 192 P.3d 858 (Utah 2008).
Vermont
Dilution Not applicable Vermont does not have a dilution statute.
Consumer Fraud 9 Vt. Stat. Ann. Vermont’s Act protects consumers
Act §§2451 et seq. and competitors and prohibits unfair
competition in commerce, and unfair
or deceptive acts or practices in
commerce. Remedies: Civil fines of
not more than $10,000 per each
violation as well as actual damages,
attorneys’ fees and, in some cases,
exemplary damages not exceeding
three times the value of the
consideration given.
Common Law Not applicable Vermont recognizes a common law
right of action for unfair competition,
but the majority of case law follows
the statute.58
Virginia
Trademark Va. Code Ann. A state trademark registration is
Registration §§59.1-92.1 et seq. required for a party to sue for
trademark counterfeiting or
infringement in Virginia. §59.1-92.12.
Remedies: Injunctive relief, and,
only if the acts were committed
with intent to cause confusion or
mistake or to deceive, profits, damages,
or attorneys’ fees; destruction of any
violating material in the possession or
control of the defendant; discretionary
attorneys’ fees.
(Continued)
58
Vermont Motor Co. v. Monk, 75 A.2d 671 (Vt. 1950).
Virginia
Revision: “Use” means the bona fide use of a mark in
Va. Code Ann. the ordinary course of trade, and not made
§59.1-92.2 merely to reserve a right in a mark. For the
purposes of this chapter, a mark shall be
deemed to be in use (i) on goods when it
is placed in any manner on the goods or
their containers or the displays associated
therewith or on the tags or labels affixed
thereto, or if the nature of the goods makes
such placement impracticable, then on
documents associated with the goods or
their sale, and the goods are possessed in
the Commonwealth* or sold or otherwise
distributed in commerce in the Com-
monwealth, and (ii) in connection with
services when it is used or displayed in
the course of selling or providing services
in the Commonwealth, or advertising
descriptive of services available within the
Commonwealth that is communicated
within or into the Commonwealth.
*Amended language in bold.

Dilution Not applicable Virginia does not have a dilution statute.
Consumer Va. Code Ann. Competitors do not have standing to
Protection Act §§59.1-196 et seq. sue under this Act. Prohibited practices
include: (1) Misrepresenting goods or ser-
vices as those of another; and (2) Misrep-
resenting the source sponsorship, approval,
or certification of goods or services. Va.
Code Ann. §59.1-200. Remedies: Actual
damages, or $500, whichever is greater.
If the trier of fact finds that the violation
was willful, it may increase damages to
an amount not exceeding three times
the actual damages sustained, or $1,000,
whichever is greater. Reasonable attorneys’
fees and costs are also available. Va. Code
Ann. §59.1-204.
Unfair Not applicable Virginia does not have a separate statute
Common Law Not applicable Virginia courts recognize a common law
right of action of unfair competition
associated with trademarks. Remedies:
Washington
Trademark Wash. Rev. Code A state trademark registration is required
Registration §§19.77.010 et seq. for a party to sue for trademark counter-
feiting or infringement in Washington.
§19.77.140. Remedies: Injunctive relief,
seizure and destruction of infringing arti-
cles, and profits and/or damages
(except that the registrant may not be
able to recover profits or damages unless
there was intent to confuse or mistake or
to deceive). The court, in its discretion,
may award reasonable attorneys’ fees and/
or treble damages in such cases where the
court finds that the other party committed
the wrongful acts in bad faith or
otherwise as according to the
circumstances of the case.
Dilution Wash. Rev. Code The statute provides for injunctive
§19.77.160 relief only, although if willful intent is
proven, remedies under the trademark
statute may be available subject to the
discretion of the court and the principles
of equity.
Unfair Business Wash. Rev. Code § Although the Act generally deals with
Practices— 19.86.010 et seq. monopolies and restraint of trade, it has
Consumer been held to prohibit trademark
Protection Act infringement as well. The State Attorney
General may bring an action for injunctive
relief and/or restitution. The Act also
provides for a private right of action.
Remedies: Injunctive relief, actual
damages, costs, and reasonable attorneys’
fees. The court has discretion to treble the
damages up to $25,000 and award costs and
attorneys’ fees. Wash. Rev. Code
§ 19.86.090.
Unfair Not applicable Washington does not have a
Competition separate statute prohibiting unfair
competition.
Common Law Not applicable Washington courts recognize
common law actions for trademark
infringement. Remedies: Injunctive
relief.
West Virginia
Trademark W. Va. Code §§47- A state trademark registration is required
Registration 2-1 et seq. for a party to sue for trademark counter-
feiting or infringement in West Virginia.
Remedies: Injunctive relief, destruction of
goods, profits and/or damages (except that
the registrant may not be able to recover
profits and/or damages unless there was
intent to confuse or mistake or to deceive).
The court in its discretion, may award
treble damages and/or reasonable attorney’s
fees where the other party committed
the wrongful acts with knowledge or in
bad faith or otherwise as according to the
circumstances of the case.
Dilution W. Va. Code §47- The statute provides for protection of
2-13 unique or distinctive marks notwith-
standing the absence of confusion as to
the source of goods or services. Remedies:
Injunctive relief only, but if willful intent
is proven, then the owner of the mark
may be entitled to other remedies under
trademark infringement.
Unfair Not applicable West Virginia does not have a separate
competition.
Common Law Not applicable West Virginia recognizes a common
law right of unfair competition
applicable to trademarks. Remedies:
Injunctive relief.
Wisconsin
Trademark Wis. Stat. §§132.01 A state trademark registration is required
Registration et seq. for a party to sue for trademark counter-
feiting or infringement in Wisconsin.
§132.033. Remedies: Actual damages,
destruction of goods, reasonable attorneys’
fees, costs, and, if willfulness is shown,
treble damages.
(Continued)
Wisconsin
Amended: “(1m) “Department” means the depart-
Wis. Stat. §132.001 ment of financial institutions.”
Replaced all references to the “secretary of
Wis. Stat. §132.01 state” with “the department.”
Dilution Not applicable Wisconsin does not have a separate statute
for dilution.
Unfair Business Wis. Stat. §§100.20 The Act protects against unfair business
Practices Act et seq. activities. Private actions are limited to
violations of orders pursuant to this section.
Remedies: Double damages, together with
costs, including reasonable attorneys’ fees.
Unfair Not applicable Wisconsin does not have a separate state
Common Law Not applicable Wisconsin courts recognize a common law
right of unfair competition applicable to
trademarks. Remedies: Damages, profits,
and/or injunctive relief.59
Wyoming
Trademark Wyo. Stat. Ann. A state trademark registration is required for
Registration §§40-1-101 et seq. a party to sue for trademark counterfeiting
or infringement in Wyoming. § 40-1-112.
Remedies: Injunctive relief, destruction of
infringer’s goods, profits and/or damages,
except that the registrant may not be able
to recover profits or damages unless there
was intent to cause confusion or mistake or
to deceive. Treble damages and attorney’s
fees may be awarded where the other party
committed the wrongful act with knowledge
or in bad faith or otherwise as according to
the circumstances of the case.
(Continued)
59
Leon’s Frozen Custard, Inc. v. Leon Corp., 513 N.W.2d 636 (Wis. App. 1994).
Wyoming
Dilution Wyo. Stat. Ann. The statute provides for injunctive relief
§40-1-115 only, although if willful intent is proven,
remedies under the trademark statute are
available.
Unfair Business Not applicable Wyoming does not have an unfair business
Practices Act practices act, which would apply to trade-
mark matters.
Unfair Not applicable Wyoming does not have a separate
competition.
Common Law Not applicable Wyoming courts recognize a common law
right of unfair competition applicable to
trademarks. Remedies: Injunctive relief
and actual damages if the defendant
acted with intent to confuse or deceive
purchasers.60
Plains Tire and Battery Co. v. Plains A to Z Tire Co., 622 P.2d 917 (Wyo.
60
1981).
62
U.S. State Criminal Statutes
Alabama (1975)
Statutory Registration Statutory Forfeiture/Destruction/
State Law(s) Section(s) Statutory Elements Requirements Definitions Restitution Provisions
Theft of Trade- Ala. Code § 13A-8-10.4 § 13A-8-10.4(5)
marks or Trade § 13A-8-10.4 “Trademark.” Any
(b) A person commits the crime of “theft of
Secrets word, name, symbol,
trade secrets or trademarks” if, without
§ 13A-9-10 or device adopted and
the owner’s effective consent, he
See also: used by any person
knowingly:
Criminal §§ 13A-9-1 or business entity to
(1) Steals a trade secret;
Simulation; et seq. identify his goods
(2) Makes a copy of an article represent-
Forgery and or services, and to
Protecting the Brand, Volume II
ing a trade secret;

Related Offenses distinguish them from
(3) Communicates or transmits a trade
the goods or services
secret;
of others.
(4) Makes a copy or reproduction of
a trademark for any commercial
purpose; or
(5) Sells an article on which a trade-
mark is reproduced knowing said
trademark was used without the
owner’s consent.
(c) Theft of trade secrets or trademarks is a
Class C felony.

Alaska (1962, amended 1978)

Forfeiture/
Statutory Registration Statutory Destruction/
Simulation Alaska Stat. § 11.46.530
§ 11.46.530
See also: (a) A person commits the crime of crimi-
Forgery; § 11.46.500-10 nal simulation if,
Criminal Posses- (1) with intent to defraud, the person
sion of a Forgery § 11.46.520 makes or alters any object in such
Device a manner that it appears to have
a rarity, age, source, or authorship
that it does not in fact possess; or
(2) with knowledge of its true charac-
ter and with intent to defraud, the
person possesses or utters an object
so simulated.
(b) Criminal simulation is
(1) a Class C felony if the value of
what the object purports to repre-
sent is $500 or more;
(2) a Class A misdemeanor if the
value of what the object purports
to represent is $50 or more but less
than $500;
(3) a Class B misdemeanor if the value of
what the object purports to represent is

less than $50.
Arizona (1/1/60, amended 5/26/98, amended 4/29/08)
64
Forfeiture/
Counterfeit Ariz. Rev. Stat. § 44-1453 § 44-1453 § 44-1453 Seizure of all items bearing
marks; §44-1453 A. Except as provided in subsections B, I. Any certificate of 1. “Counterfeit counterfeit marks and the
Violation; C and D of this section, a person who registration pursu- mark” means: instrumentalities of the
Classification; § 13-2004 knowingly and with intent to sell dis- ant to this article (a) Any unautho- crime. All personal property
Presumption; tributes, uses, displays, advertises, distrib- or federal law of rized reproduc- subject to forfeiture pursuant
Seizure; § 13-2002 utes, offers for sale, sells or possesses any any intellectual tion or copy to Title 13, Ch. 39.
Forfeiture; item that bears a counterfeit mark or any property is prima of intellectual
Civil Penalties; § 13-2001 (T) service that is identified by a counterfeit facie evidence of property. Destruction of all items bear-
Definitions mark is guilty of a Class 1 misdemeanor. the facts stated in (b) Intellectual ing counterfeit marks or other
See also: § 13-2202 B. A person who commits any act pro- the certificate of property that is dispositions with intellectual
Criminal Simula- scribed in subsection A of this section is registration. affixed to any property owner’s consent.
tion; classifica- § 44-1455 guilty of a Class 6 felony if either: item that is

tion; Forgery; 1. The person has one previous convic- knowingly sold, In any criminal proceeding in
classification; § 44-1456 tion under this section. offered for sale, which a person is convicted
Definitions; 2. At least one of the following is true: manufactured of a violation of this section,
Deceptive Busi- (a) The violation involves more than or distributed a court may order defendant
ness Practices; 100 but fewer than 1,000 items or to any iden- to pay restitution to the intel-
Classification that bear the counterfeit mark. tifying services lectual property owner.
(b) The total retail value of all of offered or ren-
the items or services that bear or dered without
are identified by the counterfeit the authority of
mark is more than $1,000 but the intellectual
less than $10,000. property owner.

Use of Unau- C. A person who knowingly manufactures or 2. “Intellectual prop-

thorized Copy of produces with intent to sell or distribute erty” means any
Computer Soft- any item that bears a counterfeit mark or trademark, service
ware; Violation; any service that is identified by a counter- mark, trade name,
Classification. feit mark is guilty of a Class 5 felony. label, term, device,
D. A person who commits any act pre- design, or word that
Use of Trade- scribed by subsection A is guilty of a is adopted or used
marked Class 5 felony if either: by a person to iden-
Containers for 1. The person has two or more previ- tify that person’s
Other Articles, ous convictions under this section. goods or services.
Violation; Classi- 2. At least one of the following is true: 3. “Retail value”
fication means:
(a) The violation involves at least
(a) For items that
1,000 items that bear the coun-
bear a coun-
terfeit mark.
terfeit mark
(b) The total retail value of all items
and that are
or services that bear or are iden-
components
tified by the counterfeit mark is
of a finished
at least $10,000.
product, the
E. A person who knowingly has possession,
counterfeiter’s
custody or control of at least 26 items
regular selling
that bear a counterfeit mark is presumed
price of the fin-
to possess the items with intent to sell
ished product
or distribute the items.
on or in which
the compo-
nent would be
utilized.
(Continued)
66
Arizona (1/1/60, amended 5/26/98, amended 4/29/08)

Forfeiture/
(b) For all other
items that bear
a counter-
feit mark or
services that
are identified
by a counter-
feit mark, the
counterfeiter’s
regular selling
price for
those items
or services.

Arkansas (1947, amended 1975)

Criminal Ark. Code (a) A person commits criminal simulation
Simulation Ann. if, with purpose to defraud or injure,
§5-37-213 the person:
See also: (1) Makes, alters, or represents any
Forgery, object in such fashion that it
elements, and § 5-37-201 (T) appears to have antiquity, rarity,
degrees of source or authorship, ingredient,
offense; or composition that it does not in
Criminal § 5-37-209 fact have; or
Possession, (2) Possesses or transfers an object
forgery devices simulated as described in subdi-
vision (a)(1) of this section with
knowledge of its true character.
(b) Criminal simulation is a:
(1) Class D felony if the value of the
object simulated exceeds $100; or
(2) Class A misdemeanor if
otherwise committed.
68
California (1872, amended 1998, amended 2012)

Forfeiture/
Destruction/
State Statutory Registration Restitution
Law(s) Section(s) Statutory Elements Requirements Statutory Definitions Provisions
Counterfeit Cal. Penal (a) Any person who For the purposes of this section, the following Forfeiture and destruc-
of Regis- Code willfully manufactures, definitions shall apply: tion of all items bearing
tered Mark; 9, §350 intentionally sells, or counterfeit trademarks
(3) “Counterfeit mark” means a spurious mark
Offenses; knowingly possesses and instrumentalities
that is identical with, or confusingly similar
Punishment for sale any counterfeit of the crime. Exception
to, a registered mark and is used, or intended
mark registered with for certain vehicles (i)
to be used, on or in connection with the
the Secretary of state in which non-defen-
same type of goods or services for which the
or registered on the dant has a community
genuine mark is registered. It is not necessary
Principal Register property interest; (ii) it
for the mark to be displayed on the outside of

of the United States is the sole vehicle for
an article for there to be a violation. For arti-
Patent and Trademark defendant’s immedi-
cles containing digitally stored information,
Office, shall, upon ate family; or are (iii)
it shall be sufficient to constitute a violation
conviction, be punish- necessary to defendant’s
if the counterfeit mark appears on a video
able as follows: livelihood or other
display when the information is retrieved
purpose. Upon request
from the article. The term “spurious mark”
of any law enforcement
includes genuine marks used on or in con-
agency and consent from
nection with spurious articles and includes
specific registrants, the
identical articles containing identical marks,
court may consider a
where the goods or marks were reproduced
motion to have
without authorization of, or in excess of any
authorization granted by, the registrant.
Taking, § 12022.6 (1) When the offense (4) “Knowingly possess” means that the person the items described in

damaging, or involves less possessing an article knew or had reason paragraph (1) of this
destruction 13 § 470 than 1,000 of the to believe that it was spurious, or that it section, not including
of property; articles described was used on or in connection with spurious recordings or audiovi-
commission 9 § 351a in this subdivision, articles, or that it was reproduced without sual works as defined in
of a felony; with a total retail authorization of, or in excess of any autho- Section 653w, donated
additional or fair market rization granted by, the registrant. to a nonprofit organiza-
punishment value less than (6) “Registrant” means any person to whom tion for the purpose of
that required for the registration of a mark is issued and that distributing the goods
grand theft as person’s legal representatives, successors, to persons living in
defined in Section or assigns. poverty at no charge
487, and if the (7) “Sale” includes resale. to the persons served
person is an indi- (8) “Value” has the following meanings: by the organization. A
vidual, he or she (A) When counterfeit items of com- court shall order a person
shall be punished puter software are manufactured or convicted of an offense
by a fine of not possessed for sale, the “value” of those under Penal Code § 350
more than $10,000 items shall be equivalent to the retail to pay restitution to the
or by imprison- price or fair market price of the true trademark owner and
ment in a county items that are counterfeited. any other victim pursu-
jail for not more (B) When counterfeited but unassembled ant to Section 1202.4
than one year, or components of computer software
by both that fine packages or any other articles
and imprisonment; described under subdivision (a) are
or, if the person is recovered, including, but not limited
a business entity, to, counterfeited digital disks, instruc-
by a fine not more tion manuals, licensing envelopes,
than $200,000. labels, patches, fabric, stickers,
(Continued)
70

Forfeiture/
Destruction/
See also: (2) Where the offense wrappers, badges, emblems, medal-
Forgery involves $1000, or lions, charms, boxes, containers,
Signatures more of the articles cans, cases, hangtags, documentation,
or Seals; Cor- described in this or packaging, or any other compo-
ruption of subdivision with a nents of any type or nature that are
Records; Sale total retail or fair designed, marketed, or otherwise
of Goods; market value less intended to be used on or in connec-
Falsely than that required tion with any articles described under
Using Name for grand theft as subdivision (a), the “value” of those
of Other defined Section components shall be equivalent to

Dealer, 487, and if the the retail price or fair market value of
Manufacturer person is an indi- the number of completed computer
or Producer; vidual, he or she software packages or other completed
Punishment; shall be punished articles described under subdivision
Exception of by imprisonment (a) that could have been made from
Sales under in a county jail those components.
Own Name not to exceed one (C) “Retail or fair market value” of a coun-
or Brand year, or pursuant terfeit article means a value equivalent
with Con- to subdivision (h) to the retail price or fair market value,
sent of True of Section 1170 for as of the last day of the charged crime,
Manufacturer 16 months, or two of a completed similar genuine article
or Producer or three years, containing a genuine mark.

or by a fine not to
exceed $500,000,
or by both that
imprisonment
and fine; or, if the
person is a busi-
ness entity, by a
fine not to exceed
$1,000,000.
(b) Any person who has
been convicted of a
violation of either
paragraph (1) or
(2) of subdivision
(a) shall, upon a
subsequent convic-
tion of paragraph (1)
of subdivision (a), if
the person is an indi-
vidual, be punished
by a fine of not more
than $100,000, or
by imprisonment in
a county jail for not
more than one year,
(Continued)
72

Forfeiture/
Destruction/
or pursuant to subdi-
vision (h) of Section
1170 for 16 months, or
two or three years, or
by both that fine and
imprisonment; or, if
the person is a business
entity, by a fine of not
more than $400,000.
(c) Any person who has

been convicted of a
violation of subdivi-
sion (a) and who, by
virtue of the conduct
that was the basis of
the conviction, has
directly and foresee-
ably caused death or
great bodily injury to
another through

r eliance on the
counterfeited item for
its intended purpose
shall, if the person is
an individual, be pun-
ished by a fine of not
more than $100,000,
or by imprisonment
pursuant to subdivi-
sion (h) of Section
1170 for two, three, or
four years, or by both
that fine and impris-
onment; or, if the
person is a business
entity, by a fine of not
more than $400,000.
(f) This section shall not
be enforced against
any party who has
adopted and lawfully
used the same or
confusingly similar
mark in the rendition
of like services or the
manufacture or sale of
(Continued)
74

Forfeiture/
Destruction/
like goods in this state
from a date prior to
the earliest effective
date of registration of
the service mark or
trademark either with
the Secretary of State
or on the Principle
Register of the United
States Patent and

Trademark Office.
(g) An owner, officer,
employee, or agent
who provides, rents,
leases, licenses, or sells
real property upon
which a violation of
subdivision (a) occurs
shall not be subject to
a criminal penalty

pursuant to this
section, unless he or
she sells, or possesses
for sale, articles
bearing a counterfeit
mark in violation
of this section. This
subdivision shall not be
construed to abrogate
or limit any civil
rights or remedies for a
trademark violation.
(a) When a person takes,
damages, or destroys
any property in
the commission or
attempted commis-
sion of a felony, with
the intent to cause
that taking, damage,
or destruction, the
court shall impose
an additional term as
follows: (see statute for
§ 1 through 4).
76
Colorado (2001)
Forfeiture/
Destruction/
Statutory Registration Restitution
State Law(s) Section(s) Statutory Elements Requirements Statutory Definitions Provisions
Trademark § 18-5-110.5 (1) A person commits trademark coun- (4) In a trial (a) “Counterfeit mark” means a
Counterfeiting terfeiting if such person intentionally under this mark identical to or substan-
manufactures, displays, advertises, dis- section, any tially indistinguishable from
tributes, offers for sale, sells, or possesses state or federal a trademark that, without the
with intent to sell or distribute marks, certificate of permission of the owner of the
goods, or services that the person knows registration of a trademark, is:
are, bear, or are identified by one or trademark shall (I) Affixed or designed to be
more counterfeit marks and has posses- be prima facie affixed to, or displayed or
sion, custody, or control of more than evidence of otherwise associated with,
25 items bearing a counterfeit mark. the facts stated goods; or

(2)(a) Trademark counterfeiting is: therein. (II) Displayed in advertising
(I) A Class 2 misdemeanor if a for, or otherwise associated
person has not previously been with, services.
convicted under this section (b)(I) “Retail value” means the
and the violation involves fewer counterfeiter’s regular
than 100 items that are, bear, selling price for the goods
or are identified by a counterfeit or services that bear or
mark or the total retail value are identified by a
of all goods or services that are, counterfeit mark.
bear, or are identified by a coun-
terfeit mark is less than $1,000;

See also: § 18-5-110 (II) A Class 1 misdemeanor if: (II) In the case of items bearing
Criminal Simu- (A) A person has one or more a counterfeit mark that are
lation; Forgery; § 18-5-102 previous convictions components of a finished
Criminal Imper- § 18-5-113 under this section; or product, “retail value”
sonation; (B) The violation involves means the counterfeiter’s
Definitions §18-5-101(T) 100 or more items that regular selling price for the
Fraud in effect- § 18-5-301 are, bear, or are identified finished product.
ing sales; by a counterfeit mark or (III) For purposes of subsection
Theft § 18-4-401 the total retail value of all (2) of this section, the
goods or services that are, quantity or retail value
bear, or are identified by a of goods or services shall
counterfeit mark is $1,000 include the aggregate quan-
or more. tity or retail value of all
(b) In addition to the penalties marks, goods, and services
specified in paragraph (a) of that are, bear, or are identi-
this subsection (2), any person fied by counterfeit marks.
convicted under this section (c) “Trademark” means any
shall be liable for a fine in an trademark registered under
amount equal to three times the the laws of this state or of the
total retail value of all goods or United States.
services that bear or are identified
by a counterfeit mark unless
extenuating circumstances are
shown by such person.
(Continued)
78
Colorado (2001)
Forfeiture/
Destruction/
(c) The remedies provided in this
section are in addition to, and
not in lieu of, any other civil or
criminal penalties or remedies
provided by law.

Connecticut (10/1/71, amended 1997)

Forfeiture/
Prohibited Acts Conn. Gen. (a) Any person who uses, forges, or coun- § 35-18h
Relative to Stat. Ann. terfeits the individual stamp or label of
Stamps, Labels, §53-347a any mechanic or manufacturer, with A court of competent
Trademarks, intent to defraud another, or vends or jurisdiction may order that
Service Marks, offers to vend any goods having any defendants pay copyright
Collective Marks, such forged or counterfeited stamp or registration all profits derived
and Certification label thereon, knowing it to be forged from, or all damages suffered
Marks or counterfeited, without disclosing the by reason of wrongful man-
fact to the purchaser, shall be impris- ufacture, use, display or sale,
oned not more than five years or fined or both such profits and dam-
not more than $250,000 or both. ages; and such court may also
(b) Any person who, fraudulently and order that any such reproduc-
with intent to deceive, affixes any tion, counterfeit or imitation
mark recorded under chapter 621a1 be delivered to an officer of
or any imitation thereof calculated the court to be destroyed, or
to deceive, to any goods, receptacle to the complainant.
or package similar in descriptive
properties to those to which such mark
is appropriated; or who, fraudulently
and with intent to deceive, places, in
any receptacle or package to which is
lawfully affixed a recorded mark,
(Continued)
80
Connecticut (10/1/71, amended 1997)

Forfeiture/
g oods other than those that such
mark is designed and appropriated to
protect; or who, fraudulently and with
intent to deceive, deals in or keeps for
sale any goods with a mark fraudu-
lently affixed as above described in this
section, or any goods contained in any
package or receptacle having a lawful
mark, which are not such goods as such
mark was designed and appropriated to
protect, shall be fined not more than

$250,000 or imprisoned not more than
five years or both.
See also: § 53a-141 (c) Any person, firm, partnership, corpo-
Criminal ration, association, union, or other
Simulation; organization (1) who willfully and
§ 53a-139, knowingly counterfeits or imitates, or
Forgery and 140, 142 offers for sale or otherwise utters or cir-
Related Offenses culates any counterfeit or imitation of
a mark recorded under chapter 622a;2
or (2) who uses or displays a genuine
mark recorded under said chapter

in a manner not authorized by the

registrant and knowing that such use or
display is not so authorized; or (3) who in
any way uses the name or mark, whether
recorded under said chapter or not, of any
individual, firm, partnership, corporation,
association, union or other organization,
in and about the sale of goods or otherwise
not being authorized to use the same and
knowing that such use is unauthorized,
shall be fined not more than $250,000 or
imprisoned not more than five years or
be both fined and imprisoned. In all cases
where such association, union, or other
organization is not incorporated, complaint
may be made by any officer or member
of such association, union, or organization
on behalf of such union, association,
or organization.
82
Delaware (7/7/05)
Statutory Registration Forfeiture/Destruction/
State Law(s) Section(s) Statutory Elements Requirements Statutory Definitions Restitution Provisions
Trademark 11 Del. Code (a) Any person who knowingly (h) Evidence—Any (b) As used in this (g) Seizure, forfeiture and
Counterfeiting Ann. §926 manufactures, uses, displays, federal or state section, the following disposition—
advertises, distributes, offers for certificate of words and phrases (1) Any items bearing a
sale, sells or possesses with intent registration of shall have the mean- counterfeit mark, and
to sell, or distribute any items or any intellectual ings given to them in all personal property,
services bearing or identified by a property shall this subsection: including, but not
counterfeit mark shall be guilty of be prima facie (1) ‘‘Counterfeit limited to, any
the crime of trademark counter- evidence of mark” means: items, objects, tools,
feiting. the facts stated a. Any unautho- machines, equip-
(c) Presumption—A person having therein. rized reproduc- ment, instrumental-
possession, custody or control tion or copy ities or vehicles of
of more than 25 items bearing of intellectual any kind, knowingly

a counterfeit mark shall be pre- property. employed or used in
sumed to possess said items with connection with a
intent to sell or distribute. violation of this sec-
(d) Penalties— tion may be seized by
(1) Except as provided in any law enforcement
paragraphs (2) and (3) of this officer.
subsection, a violation of this
section constitutes a Class A
misdemeanor.

(2) A violation of this section b. Intellectual (2) All seized personal

constitutes a Class G felony if: property affixed property referenced
a. The defendant has to any item in paragraph (1)
previously been convicted knowingly sold, of this subsection
under this section; or offered for sale, shall be forfeited
b. The violation involved manufactured in accordance with
more than 100 but less or distributed applicable law, unless
than 1,000 items bearing or identifying the prosecuting
a counterfeit mark or services offered attorney responsible
the total retail value or rendered, for the charges and
of all items or services without the the intellectual prop-
bearing or identified by a authority of erty owner consent
counterfeit mark is more the owner of in writing to another
than $2,000, but less than the intellectual disposition.
$10,000. property.
(3) A violation of this section con- (2) ‘‘Intellectual prop-
stitutes a Class E felony if: erty” means any
a. The defendant has been trademark, service
previously convicted of mark, trade
two or more offenses under name, label, term,
this section; device, design, or
b. The violation involved word adopted or
the manufacture or pro- used by a person
duction of items bearing to identify that
counterfeit marks; or person’s goods or
services.
(Continued)
Delaware (7/7/05)
84
Statutory Registration Forfeiture/Destruction/

State Law(s) Section(s) Statutory Elements Requirements Statutory Definitions Restitution Provisions
See also: § 861 c. The violation involved (3) ‘‘Retail value”
Forgery 1,000 or more items bear- means the
Possession of § 862 ing a counterfeit mark or counterfeiter’s
Forgery Devices; the total retail value of all regular selling
Deceptive Trade § 2532 items or services bearing or price for the item
Practices identified by a counterfeit or service bearing
mark is $10,000 or more. or identified by
(e) Quantity or retail value—The the counterfeit
quantity or retail value of items mark. In the case
or services shall include the aggre- of items bearing
gate quantity or retail value of all a counterfeit
items or services bearing or iden- mark, which are
tified by every counterfeit mark components of a

the defendant manufactures, uses, finished product,
displays, advertises, distributes, the retail value
offers for sale, sells, or possesses. shall be the coun-
(f) Fine—Any person convicted under terfeiter’s regular
this section shall be fined not less selling price of the
than $5,000 or an amount up to 3 finished product
times the retail value of the items on or in which the
or services bearing or identified by component would
a counterfeit mark, whichever is be utilized.
greater, unless extenuating circum-
stances are shown by the defendant.

District of Columbia (6/3/97)

Forfeiture/
Destruction/
Trademark D.C. Code (a) A person commits the offense of counter- (f) Any state or (1) “Counterfeit mark” Forfeiture of all
Counterfeiting Ann. §22- feiting if such person willfully manufactures, federal certificate means: items bearing coun-
902 (formerly advertises, distributes, offers for sale, sells, or of registration of (A) Any unautho- terfeit marks and
cited as § possesses with intent to sell or distribute any any intellectual rized reproduc- instrumentalities of
22-752) items, or services bearing or identified by a property shall tion or copy the crime.
counterfeit mark. There shall be a rebuttable be prima facie of intellectual
presumption that a person having possession, evidence of property; or Destruction of
custody, or control of more than 15 items the facts (B) Intellectual prop- all items bearing
bearing a counterfeit mark possesses said stated therein. erty affixed to any counterfeit marks
items with the intent to sell or distribute. item knowingly or donation with
(b) A person convicted of counterfeiting shall be sold, offered for intellectual property
subject to the following penalties: sale, manufactured, owners consent
(1) For the first conviction, except as or distributed,
provided in paragraphs (2) and (3) of or identifying
this subsection, by a fine not exceeding services offered or
$1,000 or by imprisonment for not more rendered, without
than 180 days, or both; the authority
of the owner of
the intellectual
property.
(Continued)
86
District of Columbia (6/3/97)

Forfeiture/
Destruction/
(2) For the second conviction, or if con- (2) “Intellectual property”
victed under this section of an offense means any trademark,
involving more than 100 but fewer than service mark, trade
1,000 items, or involving items with a name, label, term,
total retail value greater than $1,000 but picture, seal, word, or
less than $10,000, by a fine not exceed- advertisement, or any
ing $3,000 or by imprisonment for not combination of these
more than three years, or both; and adopted or used by
(3) For the third or subsequent conviction, a person to identify
or if convicted under this section of an such person’s goods

offense involving the manufacture or or services and which
production of items bearing counterfeit is lawfully filed for
marks involving 1,000 or more items, record in the Office
or involving items with a total retail of the Secretary of
value of $10,000 or greater, by a fine not State of any state or
exceeding $10,000 or by imprisonment which the exclusive
for not more than 10 years, or both. right to reproduce is
guaranteed under the
laws of the United
States or the District
of Columbia.

Forging or Imi- § 22-1502 (c) For the purposes of this chapter, the quantity (3) “Retail value” means
tating Brands or (formerly or retail value of items or services shall the counterfeiter’s
Packing Goods cited as § include the aggregate quantity or retail value regular selling price
22-1402) of all items bearing, or services identified by, for the item or service
every counterfeit mark the defendant manu- bearing or identified
factures, advertises, distributes, offers for sale, by the counterfeit
sells, or possesses. mark. In the case
(d) The fines provided in subsection (b) of this of items bearing a
section shall be no less than three times the counterfeit mark,
retail value of the items bearing, or services which are components
identified by a counterfeit mark, unless of a finished product,
extenuating circumstances are shown the retail value shall
by the defendant. be the counterfeiter’s
regular selling price of
Whoever willfully forges, or counterfeits, or
the finished product
makes use of any imitation calculated to deceive
on or in which the
the public, though with colorable difference or
component would
deviation therefrom, of the private brand, wrap-
be utilized.
per, label, trademark, bottle, or package usually
affixed or used by any person to or with the goods,
wares, merchandise, preparation, or mixture of
such person, with intent to pass off any work,
goods, manufacture, compound, preparation, or
mixture as the manufacture or production of such
person who is not really such, shall be fined not
more than $500 or imprisoned not more than 180
days, or both.
88
Florida (amended 1995, amended 7/2/08, effective 10/1/08)

Offenses Involv- Fla. Stat. Ann. (1) Whoever, knowingly and willfully, § 831.031 § 831.03 § 831.032
ing Forging or §831.032 forges or counterfeits, or causes or
Counterfeiting procures to be forged or counter- (2) A state or fed- (1) “Bodily injury” (c) In lieu of a fine otherwise
Private Labels feited, manufactures, distributes, or eral certificate means: authorized by law, when
transports, or possesses with intent of registration (a) A cut, abrasion, any person has been
to distribute or transport, upon or of trademark bruise, burn, or convicted of an offense
in connection with any goods or shall be prima disfigurement; under this section, the
services, the trademark or service facie evidence (b) Physical pain; court may fine the person
mark of any person, entity, or of the facts (c) Illness; up to three times the
association, which goods or services stated therein. (d) Impairment of retail value of the goods
are intended for resale, or knowingly the function seized, manufactured, or
possesses tools or other reproduction of a bodily sold, whichever is greater,

materials for reproduction of specific member, organ, and may enter orders
forged or counterfeit trademarks or or mental awarding court costs and
service marks commits the crime of faculty; or the costs of investigation
counterfeiting. (e) Any other and prosecution, reason-
(2) Whoever knowingly sells or offers injury to the ably incurred. The court
for sale, or knowingly purchases and body, no matter shall hold a hearing to
keeps or has in his or her possession, how temporary. determine the amount
with intent that the same shall (2) “Culpable neg- of the fine authorized
be sold or disposed, or vends any ligence” means by this paragraph.
goods having thereon a forged or reckless disregard of
counterfeit trademark, human life or

or who knowingly sells or offers for sale safety and con- (d) When a person is con-
any service that is sold in conjunction sciously doing an victed of an offense under
with a forged or counterfeit service mark, act or following a this section, the court,
of any person, entity, or association, course of conduct pursuant to s. 775.089,
knowing the same to be forged or coun- that the actor shall order the person
terfeited, commits the crime of selling knew, or reasonably to pay restitution to the
or offering for sale counterfeit goods or should have known, trademark owner and
services. was likely to cause any other victim of the
(3)(a) Violation of subsection (1) or bodily injury. offense. In determining
subsection (2) is a misdemeanor of (3) “Forged or coun- the value of the property
the first degree, punishable as pro- terfeit trademark or loss to the trademark
vided in s. 775.082 or s. 775.083, service mark” refers owner, the court shall
except that: to a mark: include expenses incurred
1. A violation of subsection (1) or (a) That is applied by the trademark owner
subsection (2) is a felony of the to or used in in the investigation or
third degree, punishable as pro- connection prosecution of the offense
vided in s. 775.082, s. 775.083, with any as well as the disgorge-
or s. 775.084, if the offense goods, services, ment of any profits
involves 100 or more but less labels, patches, realized by a person con-
than 1,000 items bearing one stickers, wrap- victed of the offense.
or more counterfeit marks or pers, badges,
if the goods involved in the emblems,
offense have a total retail value medallions,
of more than $2,500, but less charms, boxes,
than $20,000. containers,
cans, cases,
(Continued)
90

2. A violation of subsection (1) hangtags, § 831.033
or subsection (2) is a felony of documentation,
the second degree, punishable or packaging (1)(a) Any goods to which
as provided in s. 775.082, s. or any other forged or counterfeit
775.083, or s. 775.084, if the components trademarks or service
offense involves 1,000 or more of any type or marks are attached or
items bearing one or more nature that are affixed or any tools
counterfeit marks or if the designed, mar- or other materials for
goods involved in the offense keted, or other- the reproduction of
have a total retail value of wise intended any specific forged or
$20,000 or more. to be used on or counterfeit trade-
3. A violation of subsection (1) in connection mark or service mark

or subsection (2) is a felony of with any goods which are produced or
the third degree, punishable or services; possessed in violation
as provided in s. 775.082, s. (b) That is identi- of this section may
775.083, or s. 775.084 if, during cal with or an be seized by any law
the commission or as a result of imitation of a enforcement officer.
the commission of the offense, mark registered
the person engaging in the for those goods
offense knowingly or by culpa- or services on
ble negligence causes or allows the principal
to be caused bodily injury register in the
to another. United States

4. A violation of subsection (1) Patent and (b) Any personal

or subsection (2) is a felony of Trademark property, including,
the second degree, punishable Office or the but not limited to,
as provided in s. 775.082, trademark regis- any item, object,
s. 775.083, or s. 775.084 if, ter for the State tool, machine, or
during the commission or as a of Florida or any vehicle of any kind,
result of the commission of the other state, or employed as an
offense, the person engaging protected by the instrumentality in
in the offense knowingly or Amateur Sports the commission of, or
by culpable negligence causes Act of 1978, 36 in aiding or abetting
or allows to be caused serious U.S.C. s. 380, in the commission of,
bodily injury to another. whether or not the crime of counter-
5. A violation of subsection (1) or the offender feiting as proscribed
subsection (2) is a felony of the knew such mark by ss. 831.03-
first degree, punishable as pro- was so registered 831.034, and not
vided in s. 775.082, s. 775.083, or protected; otherwise included
or s. 775.084 if, during the (c) The use of in paragraph (a),
commission or as a result of the which is unau- may be seized and is
commission of the offense, the thorized by the subject to forfei-
person engaging in the offense owner of the ture pursuant to ss.
knowingly or by culpable neg- registered 932.701-932.704.
ligence causes or allows to be mark; and
caused death to another.
(Continued)
92

(b) For any person who, having (d) The application (2) The court, in imposing
previously been convicted for an or use of which sentence on a person
offense under this section, is sub- is either likely to convicted of an offense
sequently convicted for another cause confusion, under this section, shall
offense under this section, such to cause mistake, order, in addition to any
subsequent offense shall be or to deceive other sentence imposed,
reclassified as follows: or is otherwise that the person forfeit to
1. In the case of a felony of the intended to the state the following:
second degree, to a felony of be used on or (a) Any property con-
the first degree. in connection stituting or derived
2. In the case of a felony of the with the goods from any proceeds
third degree, to a felony of the or services for the person obtained,

second degree. which the mark directly or indirectly,
3. In the case of a misdemeanor is registered. as the result of the
of the first degree, to a (4) “Retail value” offense.
felony of the third degree. For means: (b) Any of the person’s
purposes of sentencing under (a) The counter- property used, or
chapter 921 and determining feiter’s regular intended to be used,
incentive gain-time eligibility selling price for in any manner or
under chapter 944, such the goods or part, to commit,
offense is ranked in level 4 of services, unless facilitate, aid, or abet
the offense severity ranking the goods or ser- the commission of
chart. vices bearing a the offense.

Evidence § 831.031 For purposes of sentencing counterfeit (c) Any item that bears
under chapter 921 and mark would or consists of a
See also: determining incentive appear to a counterfeit mark
Uttering Forged gain-time eligibility under reasonably used in committing
Instruments chapter 944, a felony offense prudent person the offense.
§ 831.02 that is reclassified under this to be authentic, (3) At the conclusion of all
paragraph is ranked one level then the retail forfeiture proceedings,
above the ranking under value shall be the court shall order that
s. 921.0022 or s. 921.0023 the price of any forfeited item bearing
of the felony offense the authentic or consisting of a coun-
committed. counterpart; or, terfeit mark be destroyed
(4) All defenses, affirmative if no authentic or alternatively disposed
defenses, and limitations reasonably sim- of in another manner
on remedies that would be ilar counterpart with the written consent
applicable in an action under exists, then of the trademark owners.
the Lanham Act, 15 U.S.C. the retail value The owners of the regis-
ss. 1051 et seq., or to an shall remain the tered or protected mark
action under s. 495.131 shall counterfeiter’s shall be responsible for
be applicable in a prosecu- regular selling the costs incurred in the
tion under this section. price. disposition of the forged
In any proceeding under or (b) In the case of or counterfeit items.
related to ss. 831.03-831.034: labels, patches,
stickers, wrap-
pers, badges,
emblems,
medallions,
(Continued)
94

(1) Proof that a person is in possession of charms, boxes,
more than 25 goods, labels, patches, containers,
stickers, wrappers, badges, emblems, cans, cases,
medallions, charms, boxes, contain- hangtags,
ers, cans, cases, hangtags, documen- documentation,
tation, or packaging or any other or packaging
components of any type or nature or any other
bearing a counterfeit mark, unless components
satisfactorily explained, gives rise to of any type or
an inference that such property is nature that are
being possessed with intent to offer it designed, mar-
for sale or distribution. keted, or other-

wise intended
to be used on or
in connection
with any goods
or services, the
retail value
shall be treated
as if each com-
ponent was a
finished good

and valued as
described in
paragraph (a).
(5) “Serious bodily
injury” means
bodily injury that
involves:
(a) A substantial
risk of death;
(b) Extreme physi-
cal pain;
(c) Protracted and
obvious disfig-
urement; or
(d) Protracted loss
or impairment
of the function
of a bodily
member, organ,
or mental
faculty.
96
Georgia (1981, amended 7/1/96)

Forfeiture/
Destruction/
Forging or counter- Ga. Code (b) Any person who knowingly and Any State or Federal (a) As used in this Code Forfeiture of all items
feiting of, or use of Ann. willfully forges or counterfeits Registration or section, the term “forged bearing counterfeit
forged or counter- §10-1-454 any trademark, service mark, or Protected by the or counterfeited trademarks, proceeds derived
feited, trademarks, copyrighted or registered design, Amateur Sports mark, service mark, or from the crime and
service marks, or without the consent of the owner Act of 1978. copyrighted or registered instrumentalities of the
copyrighted or of such trademark, service mark, or design” means any mark crime.
registered designs; copyrighted or registered design, or or design that is identical
penalties who knowingly possesses any tool, to, substantially indis- Sale of items bearing
machine, device, or other reproduc- tinguishable from, or an counterfeit marks
tion instrument or material with imitation of a trade- available with owners

the intent to reproduce any forged mark, service mark, or consent. Sale of items
or counterfeited trademark, service copyrighted or registered provided that trademark
mark, or copyrighted or registered design that is registered and/or copyrighted
design shall be guilty of the offense for those types of goods designs are obliterated.
of trademark, service mark, or copy- or services with the Sec-
righted or registered design counter- retary of State pursuant
feiting and, upon conviction, shall to this part or registered
be punished as follows: on the Principal Register
of the United States

(1) If the goods or services to Patent and Trademark Office

which the forged or counterfeit or registered under the laws
trademarks, service marks, or of any other state or pro-
copyrighted or registered designs tected by the federal Ama-
are attached or affixed, or in teur Sports Act of 1978, 36
connection with which they are U.S.C. Section 380, whether
used, or to which the offender or not the offender knew
intended they be attached or such mark or design was so
affixed, or in connection with registered or protected, if
which the offender intended the use of such trademark,
they be used, have, in the service mark, or copyrighted
aggregate, a retail sale value of or registered design has not
$100,000 or more, such person been authorized by the owner
shall be guilty of a felony and, thereof. The unregistered
upon conviction, shall be pun- symbols, emblems, trade-
ished by imprisonment for not marks, insignias, and words
less than five nor more than 20 covered by the federal
years and by a fine not to exceed Amateur Sports Act of 1978,
$200,000 or twice the retail sale 36 U.S.C. Section 380, shall
value of the goods or services, be afforded protection under
whichever is greater; the trademark law in the
(2) If the goods or services to same manner as registered
which the forged or counterfeit trademarks, service marks,
trademarks, service marks, or and copyrighted or
copyrighted or registered designs registered designs.
are attached or affixed, or in
(Continued)
98

Forfeiture/
Destruction/
connection with which they are
used, or to which the offender
intended they be attached or
affixed, or in connection with
which the offender intended
they be used, have, in the
aggregate, a retail sale value of
$10,000 or more but less than
$100,000, such person shall
be guilty of a felony and, upon

conviction, shall be punished by
imprisonment for not less than
two nor more than 10 years and
by a fine not to exceed $20,000
or twice the retail sale value of
the goods or services, whichever
is greater;
(3) If the goods or services to
which the forged or counterfeit
trademarks, service marks, or
copyrighted or registered designs


connection with which they are
used, or to which the offender
intended they be attached or
affixed, or in connection with
which the offender intended
they be used, have, in the aggre-
gate, a retail sale value of less
than $10,000, such person shall
be guilty of a misdemeanor of a
high and aggravated nature; or
(4) If a person who violates this
subsection previously has been
convicted of another violation
of this subsection, such person
shall be guilty of a felony and,
upon conviction of the second
or subsequent such violation,
shall be punished by imprison-
ment for not less than 10 nor
more than 20 years and by a fine
not to exceed $200,000 or twice
the retail sale value of the goods
or services, whichever is greater.
(Continued)
100

Forfeiture/
Destruction/
(c) Any person who sells or resells or
offers for sale or resale or who pur-
chases and keeps or has in his or her
possession with the intent to sell or
resell any goods he or she knows or
should have known bear a forged or
counterfeit trademark or copyrighted
or registered design or who sells or
offers for sale any service that is sold
or offered for sale in conjunction

with a forged or counterfeit service
mark or copyrighted or registered
design, knowing the same to be
forged or counterfeited, shall be
guilty of the offense of selling or
offering for sale counterfeit goods or
services and, upon conviction, shall
be punished as follows:
(1) If the goods or services sold or
offered for sale to which

the forged or counterfeit

connection with which they
are used, have, in the aggregate,
a retail sale value of $10,000
or more, such person shall be
guilty of a felony and, upon
conviction, shall be punished
by imprisonment for not less
than one nor more than five
years and by a fine not to exceed
$50,000 or twice the retail sale
value of the goods or services,
whichever is greater;
(2) If the goods or services to
which the forged or counterfeit
connection with which they
are used, have, in the aggregate,
a retail sale value of less than
$10,000, such person shall be
guilty of a misdemeanor of a
high and aggravated nature; or
(Continued)
102

Forfeiture/
Destruction/
(3)If a person who violates this
subsection previously has been
convicted of another violation of
paragraph (1) of this subsection,
such person shall be guilty of a
felony and, upon conviction of
the second or subsequent such
violation, shall be punished by
imprisonment for not less than
five nor more than 10 years and

by a fine not to exceed $100,000
or twice the retail sale value of
the goods or services, whichever
is greater.

Hawaii (6/21/97)
Forfeiture/
Destruction/
Trademark Haw. Code (1) A person commits the offense of trade- State or Federal (2) As used in this section: Forfeiture and destruc-
Counterfeiting Ann. § 708- mark counterfeiting who knowingly Registration tion of all items bearing
“Counterfeit mark” means
875 manufactures, produces, displays, counterfeit marks and
any spurious mark that is
advertises, distributes, offers for sale, instrumentalities of the
identical to or confusingly
Sentencing of sells, or possesses with the intent to sell crime upon convic-
similar to any print, label,
Repeat § 706-606.5 or distribute any item bearing or iden- tion or please of nolo
trademark, service mark,
Offenders tified by a counterfeit mark, knowing contendere.
or trade name registered in
that the mark is counterfeit.
accordance with chapter 482
(3) Trademark counterfeiting is a Class C
or registered on the Principal
felony.
Register of the United States
(1) . . . any person convicted of . . .
Patent and Trademark Office.
the following Class C felonies .
. . section 708-875 relating to “Sale” includes resale.
trademark counterfeiting . . .
shall be sentenced to a mandatory
minimum period of imprisonment
without possibility of parole during
such period as follows:
(a) One prior felony conviction:
(Continued)
104
Hawaii (6/21/97)
Forfeiture/
Destruction/
See also: 37§708-855 (iv) Where the instant con-
Criminal Simu- viction is for a Class C
lation; 37§708- felony offense enumer-
Forgery and 850(T), et seq. ated above—one year,
Related Offenses eight months;
(b) Two prior felony convictions:
(iv) Where the instant con-
viction is for a Class C
felony offense enumer-
ated above—three years,

four months;
(c) Three or more prior felony
convictions:
(iv) Where the instant con-
viction is for a Class C
felony offense enumer-
ated above—five years.
(2) Except as in subsection (3), a
person shall not be sentenced to a
mandatory minimum period of

imprisonment under this section unless

the instant felony offense was commit-
ted during such period as follows:
(e) Within five years after a prior
felony conviction where the
prior felony conviction was
for a Class C felony offense
enumerated above;
(3) If a person was sentenced for a
prior felony conviction to a special
term under section 706-667, then
the person shall not be sentenced
to a mandatory minimum period of
imprisonment under this section
unless the instant felony offense
was committed during such period
as follows:
(c) Within four years after the
prior felony conviction where
the prior felony conviction
was for a Class C felony
offense enumerated above.
(Continued)
106
Hawaii (6/21/97)
Forfeiture/
Destruction/
(7) For purposes of this section:
(a) Convictions under two or
more counts of an indict-
ment or complaint shall be
considered a single conviction
without regard to when the
convictions occur;
(b) A prior conviction in this
or another jurisdiction shall
be deemed a felony convic-

tion if it was punishable by
a sentence of death or of
imprisonment in excess of one
year; and
(c) A conviction occurs on the
date judgment is entered.

Idaho (1/1/72)
Forfeiture/
Destruction/
Forging or Idaho Code Every person who willfully forges or § 18-3616
Coun- § 18-3614 counterfeits or procures to be forged or
terfeiting counterfeited, any trademark usually The phrases “forged trademark” and “counter-
Trademarks affixed by any person to his goods, with feited trademarks,” or their equivalents, as
§ 18-3615 intent to pass off any goods to which used in this chapter include every alteration
such forged or counterfeited trademark or imitation of any trademark so resembling
Sale of is affixed or intended to be affixed, as the original as to be likely to deceive.
Counterfeit the goods of such person, is guilty of a
Goods § 18-3608 misdemeanor. § 18-3617
Every person who sells or keeps for
sale any goods upon or to which any The phrase “trademark” as used in the three
Punish- counterfeited trademark has been preceding sections, includes every descrip-
ment for affixed, intending to represent such tion of word, letter, device, emblem, stamp,
Counter- goods as the genuine goods of another, imprint, brand, printed ticket, label, or wrap-
feiting knowing the same to be counterfeited, per usually affixed by any mechanic, manu-
is guilty of a misdemeanor. facturer, druggist, merchant, or tradesman,
Counterfeiting is punishable by to denote any goods to be goods imported,
neither imprisonment in the state manufactured, produced, compounded, or
prison for not less than one nor more sold by him, other than any name, word, or
than 14 years. expression generally denoting any goods to be
of some particular class or description.

108
Illinois (1/1/93, amended 6/1/97, amended 8/24/09, effective 1/1/10)

Forfeiture/
Destruction/
Counterfeit 765 Ill. Compiled Whoever uses a counterfeit mark or 1040/8 1040/1 1040/9
Mark or Stat. 1040/2, imitates any trademark or service mark of
Imitates of formerly cited as which he or she is not the rightful owner (i) A state or federal “Counterfeit item” means any Forfeiture and
Trademark or Ill. Stat., Ch. 140, or in any way utters or circulates any coun- certificate of goods, components of goods, destruction of
Service Mark ¶ 24 terfeit or imitation of such a trademark registration of or services made, produced, or all items bearing
or service mark or knowingly uses such trademark is knowingly sold or knowingly counterfeit marks
counterfeit or imitation or knowingly sells prima facie evi- distributed that use or display a and instrumental-
or disposes of or keeps or has in his or her dence of the facts counterfeit mark. ities of the crime
possession, with intent that the same shall stated therein. with the consent
be sold or disposed of, any goods, wares, “Counterfeit mark” means a of defendant
merchandise, or other product of labor spurious mark: or after judicial
or service, to which any such counterfeit determination
or imitation is attached or affixed, or on (1) That is applied to or used
which any such counterfeit or imitation is in connection with any Court may order
printed, painted, stamped, or impressed, or goods, services, labels, restitution to
knowingly sells or disposes of any goods, patches, fabric, stickers, mark owners
wares, merchandise, or other product of wrappers, badges, emblems,
labor contained in any box, case, can, or medallions, charms, boxes,
package to which or on which any such containers, cans, cases,
counterfeit or imitation is attached, affixed, hangtags, documentation,

printed, painted, stamped, or impressed, or or packaging or any other

keeps or has in his possession with intent components of any type or
that the same shall be sold or disposed of, nature that are designed,
any goods, wares, merchandise, or other marketed, or otherwise
product of labor in any box, case, can or intended to be used on or
package to which or on which any such in connection with any
counterfeit, or imitation is attached, goods or services;
affixed, printed, painted, stamped, or (2) That is identical with, or
impressed or knowingly sells a service using substantially indistinguish-
a counterfeit service mark, shall be guilty able from, a mark registered
of a Class A misdemeanor for each offense, in this State, any State, or
or in the case of a counterfeit item shall be on the principal register in
punished as provided in Section 8. the United States Patent
Every person who shall knowingly use and Trademark
a counterfeit mark or display a trademark, Office and in use, whether
trade name, or service mark of which he or or not the defendant knew
she is not the lawful owner in any manner such mark was so regis-
not authorized by such owner, whether or tered; and
not the unauthorized use creates a likeli- (3) The application or use of
hood of confusion or misunderstanding, (a) which either (i) is likely to
in the sale of goods or services produced by cause confusion, to cause
the owner, but with alterations in packag- mistake, or to deceive; or
ing or labeling, or (b) in the sale of goods (ii) otherwise intended to
or services produced by the owner but in be used on or in connection
a packaging form not intended by him for with the goods or services for
such sale, or which the mark is registered.
(Continued)
110

Forfeiture/
Destruction/
Unautho- 765 Ill. Compiled (c) in the packaging or labeling of goods or “Trademark” means anything
rized Use or Stat. 1040/3, services not produced by the owner, if the adopted and used by a person
Display of formerly cited as trademark, trade name, or service mark of to identify goods made, sold,
Trademark, Ill. Stat., Ch. 140, the owner is used for the purpose or with produced, or distributed by him
Trade Name, ¶ 25 the effect of exploiting or impairing the or her or with his or her autho-
or Service owner’s good will or as a means of repre- rization and which distinguishes
Mark senting a quality, property, or characteristic them from goods made, sold,
of the goods or services being sold, other produced, or distributed by oth-
than the utility of the goods or services ers and registered in this State,
in the repair of or as a replacement of a any State, or on the principal

component of the product of the owner and register in the United States
the trademark, trade name, or service mark Patent and Trademark Office.
is used in a nonmisleading manner solely “Service mark” means
to indicate such utility, shall be deemed anything adopted and used by
guilty of a Class A misdemeanor, or in the a person to identify services ren-
case of a counterfeit item shall be punished dered by him or her or with his
as provided in Section 8. In all cases where or her authorization and that
such owner is an incorporated association distinguishes them from services
or union, suits under this Act may be rendered by others.
commenced and prosecuted by

any officer or member of such association “Person” means any

or union on behalf of and for the use of individual, firm, partnership,
such association or union. corporation, association, union,
Any person or persons who shall in any or other organization.
way knowingly use the name or seal of A mark shall be deemed to
any trademark or service mark owner in be “used” (1) in the case of a
and about the sale of goods or services or trademark, when it is placed in
otherwise, not being authorized to so use any manner on the goods, in or
the same shall be deemed guilty of a Class on any container for the goods,
A misdemeanor, or in the case of a coun- on the tags or labels affixed to
terfeit item shall be punished as provided the goods or containers, or is
in Section 8. displayed in physical association
with the goods in the sale or
(a) A person who knowingly sells, offers
distribution thereof, or (2) in
for sale, holds for sale, or uses fewer
the case of a service mark, if it
than 100 counterfeit items or coun-
identifies a service, even though
terfeit items having a retail value in
the service may be rendered
the aggregate of $300 or less is guilty
in connection with the sale
of a Class A misdemeanor and shall be
or distribution of goods of the
fined at least 25% of the retail value of
owner of the mark. A mark
all counterfeit items but no more than
shall be deemed to be “used in
$1,000, except as follows:
this State” (1) in the case of a
(1) A person who has a prior convic-
trademark when it is used on
tion for a violation of this Act
goods that are sold or otherwise
within the preceding five years is
distributed in this State, or (2)
guilty of a Class 4 felony and shall
in the case of a service mark
be fined at least 50% but no more
(Continued)
112

Forfeiture/
Destruction/
Unauthorized 765 Ill. Compiled than 100% of the retail value of all if the service identified by the
Use of Name Stat. 1040/4, counterfeit items. mark is rendered or received in
or Seal of formerly cited as (2) A person who, as a result of the this State.
Trademark or Ill. Stat., Ch. 140, offense, causes bodily harm to “Trade-name” includes
Service Mark ¶ 26 another is guilty of a Class 3 felony individual names and surnames,
and shall be fined at least 50% but firm names and corporate
no more than 100% of the retail names used by manufacturers,
value of all counterfeit items. industrialists, merchants, agri-
765 Ill. Compiled (3) A person who, as a result of the culturists, and others to identify
Stat. 1040/8 offense, causes serious bodily harm their businesses, vocations,
Sentence to, or the death of, another is or occupations; the names or
guilty of a Class 2 felony. titles lawfully adopted and used
(b) A person who knowingly sells, offers by persons, firms, associations,
for sale, holds for sale, or uses 100 or corporations, companies,
more but fewer than 500 counterfeit unions, and any manufacturing,
items or counterfeit items having a industrial, commercial, agri-
retail value in the aggregate of more cultural, or other organizations
than $300 but less than $10,000 is engaged in trade or commerce
guilty of a Class 3 felony and shall be and capable of suing and being
fined at least 25% but no more than sued in a court of law.

100% of the retail value of all “Retail value” means:

counterfeit items, except as (1) The counterfeiter’s per
follows: unit regular price for the
(1) A person who has a prior convic- counterfeit item, unless
tion for a violation of this Act the counterfeit item would
within the preceding five years is appear to a reasonably pru-
guilty of a Class 2 felony and shall dent person to be authen-
be fined at least 50% but no more tic, then the retail value
than 100% of the retail value of all shall be the price of the
counterfeit items. authentic counterpart; or
(2) A person who, as a result of the if no authentic reasonably
offense, causes serious bodily harm similar counterpart exists,
to, or the death of, another is then the retail value shall
guilty of a Class 2 felony. remain the counterfeiter’s
(c) A person who knowingly sells, offers per unit regular sale price
for sale, holds for sale, or uses 500 or for the counterfeit item.
more but fewer than 2,000 counterfeit (2) In the case of labels,
items or counterfeit items having a patches, stickers, wrap-
retail value in the aggregate of $10,000 pers, badges, emblems,
or more but less than $100,000 is guilty medallions, charms, boxes,
of a Class 2 felony and shall be fined at containers, cans, cases,
least 50% but no more than 100% of hangtags, documentation,
the retail value of all counterfeit items, or packaging or any other
except that a person who has a prior components of any type or
conviction of this Act within the pre- nature that are designed,
ceding five years is guilty of a Class 2 marketed,
(Continued)
114

Forfeiture/
Destruction/
See also: 720 Ill. Compiled felony and shall be fined at least 100% or otherwise intended to be
Forgery Stat. 5/17-3 but no more than 300% of the retail used on or in connection with
value of all counterfeit items. any counterfeit item, the retail
(d) A person who knowingly sells, offers value shall be treated as if each
for sale, holds for sale, or uses 2,000 or component was a finished
more counterfeit items or counterfeit good and valued as detailed in
items having a retail value in the paragraph (1) above.
aggregate of $100,000 but less than
$500,000 is guilty of a Class 1 felony
and shall be fined at least 50% but no

more than 100% of the retail value
of all counterfeit items, except that
a person who has a prior conviction
of this Act within the preceding five
years is guilty of a Class 1 felony and
shall be fined at least 100% but no
more than 300% of the retail value of
all counterfeit items.

(e) A person who knowingly sells, offers

for sale, holds for sale, or uses 2,000
or more counterfeit items or counter-
feit items having a retail value in the
aggregate of $500,000 or more is guilty
of a Class 1 nonprobationable felony.
(e-5) For the purposes of determining the
number of counterfeit presumed not
to be simply in possession of such,
but to possess said items with intent
to offer for sale, to sell, or to distrib-
ute items under subsection (a), (b),
(c), (d), or (e), the service marks or
trademarks need not be an aggregate
of identical marks but may be the
aggregate of all counterfeit items
offered for sale, held for sale, or used
by the defendant.
(f) Unless otherwise specifically provided,
a person, including a corporation,
convicted of violating this Act shall be
fined at least 25% of the retail value of
all the counterfeit items. In addition
to any fine, the court shall order that
restitution be paid to the owners of the
trademark, trade name, or service mark,
and to any other victim of the offense.
(Continued)
116

Forfeiture/
Destruction/
A manufacturer of counterfeit items
is guilty of a Class 3 felony for a first
offense and a Class 2 felony for second
or subsequent offenses and may be
fined up to three times the retail value
of all counterfeit items produced by
the manufacturer.
(h) A person having possession, custody,
or control of more than 25 counterfeit
items or counterfeit marks shall be

Indiana (1976, amended in 2005)

Forfeiture/
Destruction/
Statutory Registration Statutory Restitution
State Law(s) Section(s) Statutory Elements Requirements Definitions Provisions
Counterfeiting; Ind. Code (a) A person who knowingly or intentionally: State or Federal § 35-43-5-1 §34-24-1-1
forgery; applica- §35-43-5-2 (T) (1) makes or utters a written instrument in such a Registration
tion fraud manner that it purports to have been made: (t) “Written (a) The following may
(A) by another person; § 24-2-1-15 instrument” be seized:
§ 35-43-5-3 (B) at another time; means a (13) Property used
See also: (C) with different provisions; or Does not paper, a by a person
Deception (D) by authority of one who did not give adversely affect document, to commit
authority; or the rights or the or other counterfeiting
(2) possesses more than one written instrument enforcement of instrument or forgery in
knowing that the written instruments were rights in a mark containing violation of IC
made in a manner that they purport to have acquired in good written 35-43-5-2.
been made: faith at any time matter and
(A) by another person; at common law includes
(B) at another time; money,
(C) with different provisions; or coins, tokens,
(D) by authority of one who did not give stamps, seals,
authority; commits counterfeiting, a Class credit cards,
D felony. badges, trade-
marks,
(Continued)
118
Indiana (1976, amended in 2005)

Forfeiture/
Destruction/
(b) A person who, with intent to defraud, makes, medals, retail
utters, or possesses a written instrument in such a sales receipts,
manner that it purports to have been made: labels, or mark-
(1) by another person; ings (including a
(2) at another time; universal product
(3) with different provisions; or code (UPC) or
(4) by authority of one who did not give authority; another product
commits forgery, a Class C felony. identification
code), or other
objects or
symbols of value,
right, privilege,
or identification.

IOWA (7/1/2004)
Forfeiture/
State Statutory Registration Destruction/
Law(s) Section(s) Statutory Elements Requirements Statutory Definitions Restitution Provisions
Intellectual XVI Iowa 2. Criminal offense. A person who 3. Evidence. Any a. “Counterfeit mark” 4. Seizure and disposition.
Property Code Ann. knowingly manufactures, produces, state or federal means any unauthorized Any items bearing or iden-
Counter- §714.26 displays, advertises, distributes, offers certificate of reproduction or copy of tified by a counterfeit mark,
feiting for sale, sells, possesses with intent to registration of intellectual property, and all personal property,
sell or distributes any item or knowingly any intellectual or intellectual property including but not limited
provides service bearing or identified by property shall affixed to any item to any items, objects, tools,
a counterfeit mark commits intellectual be prima facie knowingly sold, offered machines, equipment,
property counterfeiting. evidence of for sale, manufactured, instrumentalities, or vehi-
a. A person commits intellectual property ownership of or distributed, or iden- cles used in connection with
counterfeiting in the first degree if any the intellectual tifying services offered a violation of this section,
of the following apply: property or rendered, without shall be seized by any law
(1) The person is manufacturing or in dispute. authority of the owner of enforcement agency.
producing an item bearing or iden- the intellectual property. a. All seized personal prop-
tified by a counterfeit mark. b. “Intellectual property” erty shall be disposed of
(2) The offense involves more than means any trademark, in accordance with sec-
1,000 items bearing or identified service mark, trade tion 809.5 or as provided
by a counterfeit mark or the total name, label, term, in paragraph “b.”
retail value of such items is equal device, design, or word b. Upon request of the intel-
to or greater than $10,000. adopted or used by a lectual property owner,
person to identify the all seized items bearing or
items or services identified by a counterfeit
of the person. mark shall be released
(Continued)
120
IOWA (7/1/2004)
Forfeiture/
(3) The offense is a third or subsequent c. “Retail value” means the by the seizing agency to the
violation of this section. highest value of an item intellectual property owner for
Intellectual property counterfeiting determined by any rea- destruction or disposition. If
in the first degree is a sonable standard at the the intellectual property owner
Class “C” felony. time the item bearing or does not request release of the
b. A person commits intellectual property identified by a counter- seized items, the items shall be
counterfeiting in the second degree if feit mark is seized. If a destroyed unless the intellec-
any of the following apply: seized item bearing or tual property owner consents to
(1) The offense involves more than identified by a counter- another disposition.
100 items but does not involve feit mark is a component
more than 1,000 items bearing or of a finished product,

identified by a counterfeit mark or “retail value” also means
the total retail value of such items is the highest value, deter-
equal to or greater than $1,000 but mined by any reasonable
less than $10,000. standard, of the finished
(2) The offense is a second violation of product on which the
this section. component would have
Intellectual property counterfeiting been utilized. The retail
in the second degree is a value shall be the retail
Class “D” felony. value of the aggregate
quantity of all items

See also: § 715A.3 c. All intellectual property counterfeiting seized which bear or are
Simulating that is not intellectual property identified by a counterfeit
Objects of counterfeiting in the first degree or mark. For purposes of this
Antiquity second degree is intellectual property paragraph, reasonable
of Rarity § 715A.2(T) counterfeiting in the third degree. standard includes but is not
Intellectual property counterfeiting limited to the market value
Forgery in the third degree is an within the community,
aggravated misdemeanor. actual value, replacement
value, or the counterfeiter’s
regular selling price for the
item bearing or identified
by a counterfeit mark, or
the intellectual property
owner’s regular selling price
for an item similar to the
item bearing or identified
by a counterfeit mark.
122
Kansas (7/1/2000, amended 5/13/2010, effective 7/2/2011)

Forfeiture/
Counter- Kan. Stat. (a) Counterfeiting is manufacturing, using, (d) Any state (e) As used in this section: § 60-4105
feiting Ann. displaying, advertising, distributing or or federal (1) “Counterfeit mark”
§21-5825 possessing with intent to distribute any certificate of means: The following property is
item or services knowing such item registration of (A) Any unauthorized subject to forfeiture:
or services bear or are identified by a any intellectual reproduction or
counterfeit mark. property shall copy of intellec- (h) all controlled sub-
(b) Counterfeiting is a: be prima facie tual property; or stances, raw materials,
(1) Severity level 7, nonperson felony if: evidence of (B) intellectual controlled substance
(A) The retail value of such item the facts stated property affixed analogs, counterfeit
or service is $25,000 or more; therein. to any item substances, or imitation
(B) such counterfeiting involves knowingly sold, controlled substances

1,000 or more items bearing a offered for sale, that have been man-
counterfeit mark; or manufactured ufactured, distributed,
(C) a third or subsequent viola- or distributed, dispensed, possessed, or
tion of this section; or identifying acquired in violation of
(2) severity level 9, nonperson felony if: services offered or the laws of this state;
(A) The retail value of such item rendered, without and
or service is at least $1,000 the authority (i) any items bearing a
but less than $25,000; of the owner of counterfeit mark.
the intellectual
property;

See also: § 50-626 (B) such counterfeiting involves (2) “intellectual property”

Deceptive more than 100 but less than means any trademark,
Acts and § 21-5825 1,000 items bearing a counter- service mark, or trade
Practices; feit mark; or name as such terms
Forgery (C) a second violation of this are defined in K.S.A.
section; and 81-202, and amend-
(3) Class A nonperson misdemeanor, ments thereto; and
if the retail value of such item or (3) “retail value” means
service is less than $1,000. the counterfeiter’s
(c) A person having possession, custody or regular selling price
control of more than 25 items bearing for the item or service
a counterfeit mark shall be presumed bearing or identified by
to possess such items with intent to the counterfeit mark.
distribute. In the case of items
(f) The quantity or retail value of items bearing a counterfeit
or services shall include the aggregate mark, which are com-
quantity or retail value of all items ponents of a finished
bearing, or services identified by, product, the retail
every counterfeit mark the defendant value shall be the
manufactures, uses, displays, advertises, counterfeiter’s regular
distributes, or possesses. selling price of the fin-
ished product on or in
which the component
would be utilized.
124
Kentucky (7/14/2000)
Forfeiture/
Destruction/
Coun- Ky. Rev. (2) Any person who willfully manufactures, uses, (7) Any state (1) As used in this section: (6) Except for items in
terfeiting Stat. Ann. displays, advertises, distributes, offers for sale, or federal (a) “Counterfeit mark” the possession of a
intellectual §365.241 sells, or possesses with intent to sell or distribute certificate of means: person not in viola-
property; any item or service that the person knows, bears registration of 1. Any unautho- tion of this section,
penalties; or is identified by a counterfeit mark shall be any intellec- rized reproduc- any items bearing
disposition guilty of counterfeiting. tual property tion or copy a counterfeit mark,
of property (3) A person having possession, custody, or control shall be prima of intellectual and all personal
of more than 25 items that the person knows facie evidence property; or property, including
bear or are identified by a counterfeit mark shall of the facts 2. Intellectual but not limited to,
be presumed to possess the items with the intent stated in the property any items, objects,
to sell or distribute. certificate. knowingly tools, machines,
(4) Any person who violates the provisions affixed to any equipment,
of this section shall be guilty of a Class A item without instrumentalities,
misdemeanor, except where the person has the authority or vehicles of any
been previously convicted of a violation of this of the owner of kind, employed or
section or the violation involves more than the intellectual used in connection
100 items bearing a counterfeit mark or the property. with a violation of
total retail value of all items bearing, or services (b) “Intellectual this section shall be
identified by, a counterfeit mark is more than property” means seized by any law
$1,000, in which case the person shall be guilty any trademark, enforcement officer.

See also: §516.020(T) of a Class D felony. Unless reduced by the court service mark, trade (a) Except as other-
Forgery et seq. for extenuating circumstances and notwith- name, label, term, wise provided in
and related standing KRS Chapter 534, upon conviction device, design, or this subsection,
offenses; §§516.108 the offender shall, in addition to any other word adopted or all personal
Criminal et seq. allowable disposition, be fined an amount equal used by a person property seized
Simulation to the greater of: to identify the under this
(a) Three times the retail value of the items person’s goods or subsection shall
bearing, or services identified by, the services. be forfeited in
counterfeit mark; (c) “Person” includes, accordance with
(b) Double the amount of the defendant’s gain in addition to its KRS 431.100.
from commission of the offense; or meaning under (b) Upon request of
(c) As otherwise allowed in KRS Chapter 534 KRS 446.010, any the intellectual
for felonies and misdemeanors. association, orga- property owner,
(5) For purposes of this section, the quantity or nization, or entity all seized items
retail value of items or services shall include amenable to suit in bearing a coun-
the aggregate quantity or retail value of all a court of law. terfeit mark
items bearing, or services identified by, every (d) “Retail value” shall be released
counterfeit mark the defendant manufactures, means the to the intellec-
uses, displays, advertises, distributes, offers for counterfeiter’s tual property
sale, sells, or possesses. regular selling owner.
(9) Notwithstanding any statute to the contrary, price for the item (c) If the intellec-
fines imposed under this section shall be paid or service bearing tual property
into the crime victims’ compensation fund or identified by the owner does not
established in KRS 346.185. counterfeit mark. request release
In the case of of seized items
items bearing a
(Continued)
126
Kentucky (7/14/2000)
Forfeiture/
Destruction/
counterfeit mark, which are bearing a counter-
components of a finished feit mark, the items
product, the retail value shall be destroyed
shall be the counterfeiter’s unless the intellec-
regular selling price of the tual property owner
finished product on or in consents to another
which the component disposition.
would be utilized. (8) The remedies pro-
vided in this section
shall be cumulative
to other civil and
criminal remedies
provided by law.

Louisiana (1984, amended 6/20/2011)

Forfeiture/
Destruction/
Illegal Use of La. Stat. A. No person shall knowingly sell, possess Any State or Federal B. For the purposes of this Section:
Counterfeit Ann. with the intent to sell, or otherwise trans- Registration (1) “Person” shall include an
Trademark; §14:229 fer for compensation anything of value individual, corporation,
Penalties having a counterfeit trademark. partnership, association,
C. Whoever violates the provisions of this Sec- or other body of persons,
tion shall be fined not more than $10,000, whether incorporated
See also: § 14:72 or be imprisoned with or without hard labor or not.
Forgery for not more than five years, or both. (2) “Counterfeit trademark”
D. In lieu of a fine otherwise authorized by law, shall mean a false
any person convicted of engaging in con- trademark that is identical
duct in violation of the provisions of this to or substantially
Section through which said person derived indistinguishable from:
pecuniary value, or by which said person (a) A genuine trademark
caused personal injury or property damage registered on the
or other loss, may be sentenced to pay a fine principal register in the
that does not exceed three times the gross United States Patent
value gained or three times the gross loss and Trademark Office
caused, whichever is greater. The court shall and used or intended for
hold a hearing to determine the amount of use on or in connection
the fine authorized by this Subsection. with goods or services; or
(Continued)
128
Louisiana (1984, amended 6/20/2011)

Forfeiture/
Destruction/
(b) A genuine trademark
specifically protected
by any state or federal
statute.
§ 14:223.1
(7) “Counterfeit label” means an

identifying label or container
that appears to be genuine but

is not.

1.04 Chart of State Criminal Counterfeiting Statutes61

Maine (1979, effective 1/1/80)
Forfeiture/
State Statutory Registration Statutory Destruction/
Law(s) Section(s) Statutory Elements Requirements Definitions Restitution Provisions
Criminal 17-A Me. 1. A person is guilty of criminal simulation if:
Simula- Rev. Stat. A. With intent to defraud, he makes or alters .
tion Ann. any property so that it appears to have an
§ 705 age, rarity, quality, composition, source or
authorship, which it does not in fact possess;
or with knowledge of its true character and
§ 703 (T) with intent to defraud, he transfers or pos-
See also: sesses property so simulated; or . . .
Forgery; § 704 2. Criminal simulation is a Class E crime.
Posses-
sion of § 901
Forgery
Devices;
Decep-
tive
Business
Practices
61
Reprinted and updated with the permission of the copyright holder from “Trademark Counterfeiting in the United States” edited by Brian W.
Brokate and Dawn Atlas, copyright 2008 International AntiCounterfeiting Coalition. All rights reserved.
130
Maryland (10/1/2002)
Forfeiture/
Destruction/
Trade- Md. Code, (b) A person may not willfully manufacture, (g) State or (a)(1) In this section the fol- (f) Any goods bearing a
mark Criminal produce, display, advertise, distribute, offer federal lowing words have the counterfeit mark are
Counter- L., §8-611, for sale, sell, or possess with the intent to sell registration of meanings indicated. subject to seizure by
feiting formerly cited or distribute goods or services that the person intellectual (2) “Counterfeit mark” a law enforcement
as Md. Code, knows are bearing or are identified by a coun- property is means: officer to preserve
Art. 27, §48A terfeit mark. prima facie (i) an unauthorized the goods for transfer
(c) If the aggregate retail value of the goods or ser- evidence copy of intellec- to the owner of the
vices is $1,000 or more, a person who violates that the tual property; or intellectual property
this section is guilty of the felony of trademark intellectual (ii) intellectual either:
counterfeiting and on conviction: property is a property affixed to (1) under an agree-

(1) is subject to imprisonment not exceeding trademark or goods knowingly ment with the
15 years or a fine not exceeding $10,000 trade name. sold, offered for person alleged to
or both; and sale, manufac- have committed
(2) shall transfer all of the goods to the owner tured, or distrib- the crime; or
of the intellectual property. uted, to identify (2) after a convic-
(d) If the aggregate retail value of the goods or ser- services offered or tion under this
vices is less than $1,000, a person who violates rendered, without section.
this section is guilty of the misdemeanor of the authority
trademark counterfeiting and on conviction: of the owner of
the intellectual
property.

See also: § 14-2902(a) (1) is subject to: (3) “Intellectual property”

False (i) for a first violation, imprisonment not means a trademark,
and exceeding 18 months or a fine not service mark, trade
Fraud- exceeding $1,000 or both; or name, label, term,
ulent (ii) for each subsequent violation, impris- device, design, or word
Adver- onment not exceeding 18 months or a adopted or used by a
tisement fine not exceeding $5,000 or both; and person to identify the
(2) shall transfer all of the goods to the owner goods or services of
of the intellectual property. the person.
(e) An action or prosecution for trademark coun- (4) “Retail value” means:
terfeiting in which the aggregate retail value (i) a trademark coun-
of the goods or services is less than $1,000 terfeiter’s selling
shall be commenced within two years after the price for the goods
commission of the crime. or services that bear
or are identified
by the counterfeit
mark; or
(ii) a trademark
counterfeiter’s
selling price of the
finished product,
if the goods that
bear a counter-
feit mark are
components of the
finished product.
(Continued)
132
Maryland (10/1/2002)
Forfeiture/
Destruction/
(5)
“Trademark counter-
feiter” means a person
who commits the
crime of trademark
counterfeiting
prohibited by
this section.

Massachusetts (5/15/98)
Forfeiture/
Destruction/
State Statutory Registration Statutory Restitution
Law(s) Section(s) Statutory Elements Requirements Definitions Provisions
Items or Mass. Gen. L. (b) Whoever willfully manufactures, uses, displays, (d) Any state (a) For purposes of (g) Any items bearing a
Services Ann., Ch. 266, advertises, distributes, offers for sale, sells or or federal this section, the counterfeit mark and
Bearing §147 possesses with intent to sell or distribute any certificate of following words all personal prop-
or Iden- item or services bearing or identified by a coun- registration of shall have the erty including, but
tified by terfeit mark shall be punished as follows: any intellec- following meanings: not limited to, any
Coun- (1) if the violation involves 100 or fewer items tual property items, objects, tools,
terfeit bearing a counterfeit mark or the total retail shall be prima “Counterfeit mark,” machines, equipment,
Mark; value of all items bearing or of services facie evidence any unauthorized instrumentalities or
Sales; identified by a counterfeit mark is $1,000 or of the facts reproduction or copy of vehicles of any kind,
Penalties less and is a first offense, by imprisonment stated therein. intellectual property, employed or used
in a jail or house of correction for not more or intellectual property in connection with
than two and one-half years; affixed to any item a violation of this
(2) if the violation involves more than 100 but knowingly sold, offered section shall be seized
fewer than 1,000 items bearing a coun- for sale, manufactured by any law enforce-
terfeit mark or the total retail value of all or distributed, or identi- ment office; provided,
items bearing or of services identified by a fying services offered or however, that all such
counterfeit mark is more than $1,000 but rendered, without the seized personal prop-
less than $10,000 or is a second offense, by authority of the owner erty shall be forfeited
imprisonment in the state prison for not of the intellectual in accordance with
more than five years; property. the provisions of
(Continued)
134
Massachusetts (5/15/98)
Forfeiture/
Destruction/
(3) if the violation involves 1,000 or more “Intellectual chapter 257. Upon the
items bearing a counterfeit mark or the property,” any request of the intellec-
total retail value of all items bearing or of trademark, service tual property owner,
services identified by a counterfeit mark mark, trade name, label, all seized items bearing
is $10,000 or more or if the violation term, device, design or a counterfeit mark
involves the manufacture or production word that is (1) adopted shall be released to the
of items bearing counterfeit marks or if or used by a person to intellectual property
the violation involves the manufacture or identify such person’s owner for destruc-
production of items that pose a threat to goods or services, and tion or disposition;
the public health or safety or it is a third or (2) registered, filed or provided, however,
subsequent offense, by imprisonment in the recorded under the laws that if the intellectual
state prison for not more than 10 years. of the commonwealth property owner does
(c) For the purposes of this section, the quantity or of any other state, not request release of
or retail value of items or services shall include or registered in the seized items bearing
the aggregate quantity or retail value of all principal register of the a counterfeit mark,
items bearing or of services identified by every United States Patent such items shall be
counterfeit mark the defendant manufactures, and Trademark Office. destroyed unless the
uses, displays, advertises, distributes, offers for intellectual property
sale, sells or possesses. owner consents to
another disposition.

(d) A person having possession, custody or control “Retail value,” the

of more than 25 items bearing a counterfeit counterfeiter’s regular
mark shall be presumed to possess said items selling price for the item
with the intent to sell or distribute. or service bearing or
(e) Any person convicted under this section shall, identified by the coun-
in addition to any penalty imposed pursuant terfeit mark; provided,
to subsection (b), be punished by a fine in an however, that in the
amount not to exceed three times the retail case of items bearing a
value of the items bearing or of services identi- counterfeit mark, which
fied by a counterfeit mark, unless extenuating are components of a
circumstances are shown by the defendant. finished product, the
(f) Any person convicted under this section shall, retail value shall be the
in addition to any penalty imposed pursuant counterfeiter’s regular
to subsections (b) and (e), be punished by a selling price of the fin-
fine in an amount equal to 75 per cent of the ished product on or in
retail value of the items bearing or of services which the component
identified by a counterfeit mark, when the items would be utilized.
involved pose a threat to public health or safety.
136
Michigan (3/1/98, amended 12/25/2002, effective 3/31/2003)

Forfeiture/
Destruction/
Coun- Mich. Comp. (1) A person who willfully counterfeits an (7) As used in this section and (6) Any item of
terfeiting L. Ann. identifying mark with intent to deceive or section 264: property bearing a
Identify- §750.263 defraud another person or to represent an (a) “Aggregate value of the counterfeit mark
ing Mark item of property or service as bearing or violation” means the shall be seized
identified by an authorized identifying mark total value of all items under warrant or
is guilty of a misdemeanor punishable by of property or services incident to a lawful
imprisonment for not more than 1 year or a bearing or identified by arrest. An item of
fine of not more than $1,000, or both. a counterfeit mark and property that bears a
(2) Except as provided in subsection (3), a per- involved in the viola- counterfeit mark is
son who willfully delivers, offers to deliver, tion, determined using subject to forfeiture
uses, displays, advertises, or possesses with the defendant’s regular or in the same manner
intent to deliver any item of property or ser- intended selling price for as provided in
vices bearing, or identified by a counterfeit each item or service or, sections 4701 to
mark, is guilty of a misdemeanor punishable if an item of property is 4709 of the revised
by imprisonment for not more than 1 year intended as a component judicature act of
or a fine of not more than $1,000 or three of a finished product, the 1961, 1961 PA 236,
times the aggregate value of the violation, defendant’s regular or MCL 600.4701 to
whichever is greater, or both imprisonment intended selling price of 600.4709. Upon
and a fine. the finished product in determination that
which the component an item of property
would be used.

(3) A person who violates subsection (2) is (b) “Counterfeit mark” bears a counterfeit
guilty of a felony punishable by imprison- means either of the mark, the court shall
ment for not more than five years or a fine following: order the item for-
of not more than $50,000 or three times the (i) A copy or imitation feited and shall do 1
aggregate value of the violation, whichever of an identifying of the following:
is greater, or both imprisonment and a fine, mark without (a) If the owner of
if any of the following apply: authorization by the the identifying
(a) The person has a prior conviction identifying mark’s mark requests,
under this section, section 264 or owner. return the item
265a,1 or former section 265 or a law (ii) An identifying mark to that owner
of the United States or another state affixed to an item of for destruction
substantially corresponding to this property or identify- or another
section, section 264 or 265a, or former ing services without disposition or
section 265. authorization by the use approved by
(b) The violation involved more than 100 identifying mark’s the court.
items of property. owner. (b) In the absence
(c) The aggregate value of the violation is (c) “Deliver” means to actu- of a request
more than $1,000. ally or constructively under subdivi-
(4) A person who willfully manufactures or transfer or attempt sion (a), order
produces an item of property bearing or to transfer an item of the seizing law
identified by a counterfeit mark is guilty of a property from 1 person enforcement
felony punishable by imprisonment for not to another, regardless agency to
more than five years or a fine of not more of whether there is an destroy the item
than $50,000 or three times the aggregate agency relationship. as contraband
value of the violation, whichever is greater, or order an
or both imprisonment and a fine. alternative
(Continued)
138
Michigan (3/1/98, amended 12/25/2002, effective 3/31/2003)

Forfeiture/
Destruction/
See also: § 750.264 (5) Willful possession of more than 25 items of (d) “Identifying mark” disposition or
Posses- property bearing or identified by a counter- means a trademark, use with the
sion of feit mark gives rise to a rebuttable presump- service mark, trade name, consent of the
counter- tion that the person possessed those items name, label, device, owner of the
feit mark, with intent to deliver them in violation of design, symbol, or word, identifying
device or subsection (2). in any combination, mark.
material lawfully adopted or used
to create A person who possesses a counterfeit mark with by a person to identify
coun- intent to use or deliver it, who possesses a die, items of property manu-
terfeit plate, engraving, template, pattern, or material factured, sold, or licensed

mark, or with intent to create a counterfeit mark, or who by the person or services
identify- possesses an identifying mark without authori- performed by the person.
ing mark zation of the identifying mark’s owner and with (e) “Person” means an
to create intent to create a counterfeit mark is guilty of a individual, partnership,
counter- misdemeanor punishable by imprisonment for corporation, limited
feit mark not more than 1 year or a fine of not more than liability company, associa-
$1,000, or both. tion, union, or other legal
entity. For purposes of
ownership of an identify-
ing mark, person includes
a governmental entity.

Minnesota (1986, amended 5/7/99)

Forfeiture/
Destruction/
Coun- Minn. Stat. Subd. 2. Crime. A person who intention- Subd. 6. Prima facie (a) As used in this section, the fol- Subd. 5. Forfeiture.
terfeited Ann. ally manufactures, produces, distributes, evidence. A Minnesota lowing terms have the meanings Property used to
Intel- §609.895 offers for sale, sells, or possesses with intent or federal certificate given them. commit or facilitate
lectual to sell or distribute any counterfeited item of registration of an (b) “Counterfeit mark” means: the commission of
Property; or service, knowing or having reason to intellectual property is (1) any unauthorized a violation of this
Penalties know that the item or service is counter- prima facie evidence reproduction or copy of section, and all
feit, is guilty of counterfeiting intellectual of the registrant’s intellectual property; or money and property
property and may be punished as provided ownership and exclusive (2) intellectual property affixed representing pro-
in subdivision 3. right to use the to any item without the ceeds of a violation
intellectual property authority of the owner of of this section,
Subd. 3. Penalties. (a) A person who is in connection with the intellectual property. shall be forfeited
convicted of violating subdivision 2 may the goods or services (c) “Counterfeited item or service” in accordance with
be sentenced to imprisonment for not more described in means an item or service sections 609.531
than five years or to payment of a fine of the certificate. bearing or identified by a to 609.5316. Not-
not more than $100,000, or both, if: counterfeit mark. withstanding any
(d) “Intellectual property” means provision of section
(1) the violation involves the manufacture any trademark, service mark, or 609.5315 to the
or production of a counterfeited item trade name. contrary, forfeited
or items; items bearing or
(Continued)
140

Forfeiture/
Destruction/
See also: § 609.63 (2) the violation involves the distribution, (e) “Retail value” means: identified by a
Forgery; offer for sale, sale, or possession with (1) the usual selling price of the counterfeit mark
Counter- intent to sell or distribute 1,000 or article or service bearing or must destroyed
feiting or more counterfeited items; identified by the counterfeit unless the intellec-
dealing in § 333.42 (3) the violation involves the distribution, mark; or tual property owner
counter- offer for sale, sale, or possession with (2) the usual selling price of a consents to another
feits; how intent to sell or distribute counter- finished product on or in disposition.
punished feited items or services having a retail which components bearing
value of more than $10,000; or or identified by a counterfeit
(4) the defendant has two or more prior mark are used.

convictions for violating this section (f) “Service mark” means a mark
or a law of another state or the United used by a person to identify
States that provides criminal penalties services and to distinguish them
for counterfeiting intellectual property. from the services of others.
(b) Except as otherwise provided in (g) “Trademark” means a mark used
paragraph (a), a person who is by a person to identify goods and
convicted of violating subdivision to distinguish them from the
2 may be sentenced to impris- goods of others.
onment for not more than three
years or to payment of a fine of not
more than $50,000, or both, if:

(1) the violation involves more (h) “Trade name” means a word,

than 100 but fewer than 1,000 name, symbol, device, or any
counterfeited items; combination of the foregoing
(2) the violation involves in any form or arrangement,
counterfeited items or services used by a person to identify the
having a retail value of more person’s business, vocation, or
than $1,000 but not more occupation and to distinguish it
than $10,000; or from the business, vocation, or
(3) the defendant has one prior occupation of others.
conviction for violating this
section or a law of another
state or the United States
that provides criminal
penalties for counterfeiting
intellectual property.
(c) A person may be sentenced to
imprisonment for not more than
one year or to payment of a fine
of not more than $3,000, or
both, if the person is convicted
of violating subdivision 2, under
circumstances not described in
paragraph (a) or (b).
(Continued)
142

Forfeiture/
Destruction/
(d) If the defendant distributes, sells,
offers for sale, or possesses with
intent to sell or distribute more
than one item or service bearing
or identified by more than one
counterfeit mark, the quantity
or retail value of these items and
services may be aggregated for
purposes of determining penalties
under this subdivision.
Subd. 4. Alternative fine. In lieu of the

fine authorized by subdivision 3, a person
convicted of violating this section who
received economic gain from the act or
caused economic loss during the act may
be sentenced to pay a fine calculated in
the manner provided in section 609.904,
subdivision 2.

Mississippi (1857, amended 1942, amended 3/1/2011, amended 4/18/2012)

Forfeiture/
Destruction/
State Statutory Statutory Restitution
Law(s) Section(s) Statutory Elements Registration Requirements Definitions Provisions
Trade- Miss. Code (1) Every person who shall knowingly and § 75-25-5 § 97-21-53
marks Ann. willfully forge or counterfeit, or cause or
and §97-21-53 procure to be forged or counterfeited, any (a) Subject to the limitations set (2) Property used in any
labels; representation, likeness, similitude, copy, forth in this chapter, any per- way to violate the
penal- or imitation of the private stamp, wrappers, son who uses a mark may file provisions of this sec-
ties for or labels usually fixed by any mechanic or in the office of the secretary, in tion shall be subject
offenses; manufacturer to, and used by such mechanic a manner complying with the to forfeiture under
forfei- or manufacturer on, in, or about the sale of requirements of the secretary, Sections 97-21-101
tures any goods, wares, or merchandise whatsoever, an application for registration and 97-21-103.
shall be punished as follows: of that mark setting forth, but
(a) If the goods or services to which the not limited to, the following
forged or counterfeit representation, information:
likeness, similitude, copy of imitation (1) The name and business
of the private stamp, wrappers or labels address of the per-
are attached or affixed, or in connection son applying for such
with which they are used, or to which registration; and, if a
the offender intended they be attached or corporation, the state
affixed, or in connection with which the of incorporation, or if
offender intended they be used, have, in a partnership or other
the aggregate, a retail value of the goods entity, the state in which
(Continued)
144

Forfeiture/
Destruction/
Imple- § 97-21-55 if they were not forged or counterfeited the entity is organized § 97-21-55
ments of $1,000, or more, the person shall be and the names of the gen-
to Forge guilty of a felony and, upon conviction, eral partners, owners and/ (2) Property used in any
Trade- may be imprisoned for up to five years or managers, as specified way to violate the
marks or and fined up to $10,000; or by the secretary; provisions of this sec-
Labels; (b) If the goods or services to which the (2) The goods or services on tion shall be subject
Forfei- forged or counterfeit representation, or in connection with to forfeiture under
tures likeness, similitude, copy, or imitation which the mark is used Sections 97-21-101
of the private stamp, wrappers, or labels and the mode or manner and 97-21-103.
are attached or affixed, or in connection in which the mark is used

§ 97-21-57
with which they are used, or to which on or in connection with
the offender intended they be attached such goods or services
(2) Property used in any
or affixed, or in connection with which and the class in
way to violate the
the offender intended they be used, have, which such goods or
provisions of this sec-
in the aggregate, a retail value of less services fall;
tion shall be subject
than $1,000, the person shall be guilty (3) The date when the mark
to forfeiture under
of a misdemeanor and, upon conviction, was first used anywhere
Sections 97–21–101
may be imprisoned for up to one year and and the date when it was
and 97–21–103.
fined up to $5,000. first used in this state by
the applicant or predeces-
sor in interest; and

(1) Every person who shall have in his possession (4) A statement that the § 97-21-101
any die, plate, engraving, or printed label, applicant is the owner of (1) All property, real or
stamp, or wrapper, or any representation, the mark, that the mark personal, including
likeness, similitude, copy, or imitation of the is in use, and that, to the money, used in the
private stamp, wrapper, or label usually fixed knowledge of the person course of, intended
by any mechanic or manufacturer to, and verifying the application, for use in the course
used by such mechanic or manufacturer on, no other person has of, derived from, or
in, or about the sale of any goods, wares, or registered, either federally realized through,
merchandise, with intent to use or sell the or in this state, or has the conduct in violation
said die, plate or engraving, or printed stamp, right to use such mark of Section 97-21-53,
label, or wrapper, for the purpose of aiding either in the identical 97-21-55, 97-21-57 or
or assisting, in any way whatever, in vending form thereof or in 97-23-89 is subject to
any goods, wares, or merchandise in imitation such near resemblance civil forfeiture to the
of, or intended to resemble and be sold for thereto as to be likely, state pursuant to the
the goods, wares, or merchandise of such when applied to the provisions of Section
mechanic or manufacturer, shall be guilty of goods or services of such 2 of this act; provided,
a felony, and, upon conviction, be punished other person, to cause however, that a
by imprisonment for not more than five years confusion, or to cause forfeiture of personal
and a fine of $10,000. mistake, or to deceive. property encumbered
by a bona fide security
(1) Every person who shall sell, vend, or possess
interest or real prop-
with intent to sell or vend any goods, wares,
erty encumbered by
or merchandise having thereon any forged
a bona fide mortgage,
or counterfeit stamp or label, imitating,
deed of trust, lien
resembling, or purporting to be the stamp
or encumbrance of
or label of any mechanic or manufacturer,
record shall
knowing the same to be forged or
(Continued)
146

Forfeiture/
Destruction/
Sale of § 97-21-57 counterfeited, and resembling or purporting be subject to the
Goods to be imitations of the stamps or labels of interest of the secured
Bearing such mechanic or manufacturer shall be party or subject to the
Coun- punished as follows: interest of the holder
terfeit (a) If the goods or services to which the of the mortgage,
Trade- forged or counterfeit representation, deed of trust, lien
mark or likeness, similitude, copy, or imitation or encumbrance of
Label; of the private stamp, wrappers, or labels record if such secured
Penalties are attached or affixed, or in connection party or holder nei-
for Vio- with which they are used, or to which ther had knowledge
lations; the offender intended they be attached or of or consented to the
Forfei- affixed, or in connection with which the act or omission.
tures offender intended they be used, have, in (2) Property subject to for-
the aggregate, a retail value of the goods feiture may be seized by
if they were not forged or counterfeited of law enforcement offi-
$1,000, or more, the person shall be guilty cers upon process issued
of a felony and, upon conviction, may be by any appropriate
imprisoned for up to five years and fined court having jurisdic-
up to $10,000; or tion over the property.
Seizure without process
may be made if:

(b) If the goods or services to which the (a) The seizure is

forged or counterfeit representation, incident to an
likeness, similitude, copy, or imitation arrest or a search
of the private stamp, wrappers, or labels under a search
are attached or affixed, or in connection warrant or an
with which they are used, or to which inspection under a
the offender intended they be attached or lawful administra-
affixed, or in connection with which the tive inspection;
offender intended they be used, have, in (b) The property
the aggregate, a retail value of the goods subject to seizure
if they were not forged or counterfeited of has been the
less than $1,000, the person shall be guilty subject of a prior
of a misdemeanor and, upon conviction, judgment in favor
may be imprisoned for up to one year and of the state in a
fined up to $5,000. criminal injunc-
tion or forfeiture
proceeding based
upon this article.
(4) Any aggrieved person
may institute a civil
proceeding against any
person or enterprise
convicted of engaging
in activity in violation
of Section 97-21-53,
97-21-55,
(Continued)
148

Forfeiture/
Destruction/
97-21-57 or 97-23-89.
In such proceeding,
relief shall be granted
in conformity with
the principles that
govern the granting of
injunctive relief from
threatened loss or
damage in other civil
cases, except that no

showing of immediate
and irreparable injury,
loss or damage to the
person shall have to
be made.

(7) The application of one

civil remedy under
any provision of this
act shall not preclude
the application of any
other remedy, civil
or criminal, under
this act or any other
provision of law. Civil
remedies under this
act are supplemental.
150
Missouri (1968, amended 1/18/98)

Forfeiture/
Destruction/
Defini- Vernon’s 2. Any person who willfully 9. Any state or federal (1)
“Counterfeit mark,” any § 570.105
tions – Ann. Mo. manufactures, uses, displays, certificate of registra- unauthorized reproduction
Coun- Stat. advertises, distributes, offers for sale, tion of any intellectual or copy of intellectual 1. Any items bearing a
terfeiting §570.103 sells, or possesses with intent to sell property shall be prima property or intellectual counterfeit mark, and
Marks - or distribute any item, or services, facie evidence of the property affixed to any item all personal property,
Penalties bearing or identified by a counterfeit facts stated therein. knowingly sold, offered including but not
mark, shall be guilty of the crime for sale, manufactured, or limited to, any
of counterfeiting. A person having distributed, or identifying items, objects, tools,
possession, custody or control of more services offered or rendered, machines, equipment,
than 25 items bearing a counterfeit without the authority of the instrumentalities or

mark shall be presumed to possess said owner of the intellectual vehicles of any kind,
items with intent to sell or distribute. property; employed or used in
3. Counterfeiting shall be a Class A (2)
“Intellectual property,” any connection with a
misdemeanor, except as provided in trademark, service mark, violation of section
subsections 4 and 5 of this section. trade name, label, term, 570.103 or this sec-
4. Counterfeiting shall be a Class D device, design, or word tion shall be seized by
felony if: adopted or used by a person any law enforcement
(1) The defendant has previously to identify such person’s officer. All seized per-
been convicted under this goods or services; sonal property shall
section; or be forfeited in

See also: § 570.090 (2) The violation involves more than (3)

“Retail value,” the coun- accordance with
Forgery; 100 but fewer than 1,000 items terfeiter’s regular selling section 513.600,
Posses- bearing a counterfeit mark or price for the item or service RSMo, et seq.
sion of a § 570.100 the total retail value of all items bearing or identified by 2. Upon the request
Forging bearing, or services identified by, the counterfeit mark. In of the intellectual
Instru- a counterfeit mark is more than the case of items bearing a property owner, all
mental- $1,000, but less than $10,000. counterfeit mark, which are seized items bearing a
ity 5. Counterfeiting shall be a Class C components of a finished counterfeit mark shall
felony if: product, the retail value be released to the
(1) The defendant has been previ- shall be the counterfeiter’s intellectual property
ously convicted of two or more regular selling price of the owner for destruc-
offenses under this section; finished product on or in tion or disposition.
(2) The violation involves the man- which the component If the intellectual
ufacture or production of items would be utilized. property owner does
bearing counterfeit marks; or not request release of
(3) The violation involves 1,000 or seized items bearing
more items bearing a counterfeit a counterfeit mark,
mark or the total retail value such items shall be
of all items bearing, or services destroyed unless the
identified by, a counterfeit mark intellectual property
is more than $10,000. owner consents to
(Continued)
152
Missouri (1968, amended 1/18/98)

Forfeiture/
Destruction/
6. For purposes of this section, the quan-
tity or retail value of items or services
shall include the aggregate quantity
or retail value of all items bearing, or
services identified by, every counter-
feit mark the defendant manufactures,
uses, displays, advertises, distributes,
offers for sale, sells, or possesses.
7. Any person convicted of
counterfeiting shall be fined an

amount up to three times the retail
value of the items bearing, or services
identified by, a counterfeit mark,
unless extenuating circumstances are
shown by the defendant.
8. The remedies provided for herein
shall be cumulative to the other civil
remedies provided by law.

Montana (1973, amended 4/6/2009, amended 3/26/2011, effective 10/1/2011)

Forfeiture/
Trade- Mont. Code (1)(a) A person commits the offense of § 30-13-336 § 30-13-301 (3) When imposing sentence on a
mark Ann. trademark counterfeiting if the person convicted of a violation
Coun- §30-13-338 person knowingly manufactures, Nothing in this (3) “Counterfeit mark” means of this section, the court may
terfeiting distributes, transports, offers part adversely a spurious mark: order restitution as provided
– Pre- for sale, sells, or possesses with affects the rights (a) that is applied to or in 30-13-335 to any person
sumption intent to sell or distribute any or the enforce- used in connection harmed by the trademark
– Pen- goods, services, labels, patches, ment of rights in with any goods, ser- counterfeiting.
alties fabric, stickers, wrappers, badges, marks acquired at vices, labels, patches, (4)(a) Any items bearing a
– Res- emblems, medallions, charms, common law in fabric, stickers, wrap- counterfeit mark and all
titution boxes, containers, cans, cases, good faith at pers, badges, emblems, personal property employed
– Forfei- hangtags, documentation, pack- any time. medallions, charms, or used in connection
ture aging, or any other components boxes, containers, with counterfeiting,
of any type or nature that are cans, cases, hangtags, including but not limited
designed, marketed, or otherwise documentation, pack- to any items, objects, tools,
intended to be used on or in aging, or any other machines, equipment,
connection with any goods or ser- components of any instruments, or vehicles of
vices bearing a counterfeit mark. type or nature that are any kind, must be seized by
(b) A person having possession, designed, marketed, law enforcement officials
custody, or control of more than or otherwise intended who have the opportunity
25 items of goods, labels, patches, to be used on or in to take possession of the
fabric, stickers, wrappers, badges, connection with any items or personal property.
goods or services;
(Continued)
154

Forfeiture/
emblems, medallions, charms, (b) that is identical (b) All seized items and
boxes, containers, cans, cases, with or substantially personal property
hangtags, documentation, indistinguishable from referenced in this
packaging, or any other a mark that is in use subsection (4) must be
components of any type or nature and is registered in forfeited and may, upon
bearing a counterfeit mark must this state or any other request of the registrant,
be presumed to possess the items state or on the prin- be released to the
with intent to offer for sale, sell, cipal register in the registrant for destruction
or distribute the items. United States patent or destroyed by an officer
(2)(a) A person convicted of the offense and trademark office, of the court as provided
of trademark counterfeiting whether or not the in 30-13-335 unless

shall be fined an amount not to person employing the the registrant agrees to
exceed $1,000 or be imprisoned mark knew the mark another disposition of
in the county jail for a term not was registered; and the seized items or
to exceed six months, or both, (c) the application or use personal property.
if the offense involves less than of which is:
100 items bearing one or More (i) likely to deceive or
counterfeit marks or the total cause confusion or
retail value is less than $1,000. mistake; or
A person convicted of a second
offense shall be fined $1,000 or be

See also: § 45-6-318 imprisoned in the county jail for (ii) otherwise § 30-13-335
Decep- a term not to exceed six months, intended to be
tive or both. A person convicted of a used on or in (1) An owner of a mark registered
Business § 45-6-325 third or subsequent offense shall connection with under this part may proceed by
Prac- be fined $1,000 and be impris- the goods or suit to enjoin the manufac-
tices; oned in the county jail for a term services for which ture, use, display, or sale of
Forgery of not less than 30 days or more a registered mark any counterfeits or imitations
than six months. is registered. of the mark. Any court of
(b) If the offense involves 100 items (4) “Counterfeiter” means competent jurisdiction may
or more bearing one or more a person employing a grant injunctions to restrain
counterfeit marks and the retail counterfeit mark. the manufacture, use, display,
value is $1,000 or more, the (5) “Dilution” means the or sale as is considered by the
person shall be fined an amount lessening of the capacity of court to be just and reasonable.
not to exceed $10,000 or be a famous mark to identify The court may require the
imprisoned in the state prison for and distinguish goods or defendants to pay to the owner
a term not to exceed one year, services, regardless of the all profits derived from and all
or both. presence or absence of: damages suffered by reason of
(a) competition between the wrongful manufacture, use,
the owner of the display, or sale. The court may
famous mark and other also order that any counterfeits
parties; or or imitations in the possession
(b) likelihood of or under the control of any
confusion, mistake, defendant in the case be deliv-
or deception. ered to an officer of the court
or to the complainant to
(Continued)
156

Forfeiture/
(6) “Mark” means any be destroyed. The court,
trademark or service mark in its discretion, may enter
entitled to registration judgment for an amount not to
under this part whether exceed three times the profits
registered or not. and damages and reasonable
(7) “Person” means any attorney fees of the prevailing
individual, firm, party in cases in which the
partnership, limited court finds that the other party
liability company, committed the wrongful acts
corporation, association, with knowledge, in bad faith,
union, or other or otherwise as according to

organization capable of the circumstances of the case.
suing and being sued in a (2) The enumeration in this part
court of law. of any right or remedy does
(8) “Registrant” means the not affect a registrant’s right to
person to whom the prosecute under any criminal
registration of a mark law of this state.
under this part is issued
or the person’s legal
representatives, successors,
or assigns.

(9) “Retail value” means:

(a) the counterfeiter’s
regular selling price
for goods or services
unless the goods or ser-
vices bearing a coun-
terfeit mark or the
items and components
described in subsection
(9)(b) would appear to
a reasonably prudent
person to be authentic,
in which case the
retail value is the
price of the authentic
counterpart; or
(b) in the case of items
bearing a counterfeit
mark that are com-
ponents of a finished
product and in the
case of labels, patches,
fabric, stickers, wrap-
pers, badges, emblems,
medallions, charms,
boxes, containers,
(Continued)
158

Forfeiture/
cans, cases, hangtags,
documentation,
packaging, or any
other components
of any type or nature
that are designed,
marketed, or otherwise
intended to be used on
or in connection with
any goods or services,
the counterfeiter’s
regular selling price of
the finished product
on or in which the
items or component
would be utilized.
(10) “Service mark” means
any word, name, symbol,
or device or any combi-
nation of words, names,
symbols, or devices used
by a person to identify

and distinguish the

services of one person,
including a unique
service, from the services
of others and to indicate
the source of the services,
even if that source is
unknown. Titles, char-
acter names used by a
person, and other distinc-
tive features of radio or
television programs may
be registered as service
marks notwithstanding
that they or the programs
may advertise the goods
of the sponsor.
(11) “Trade name” means any
name used by a person
to identify a business or
vocation of that person.
(12) “Trademark” means any
word, name, symbol,
device, or any combina-
tion of words, names,
(Continued)
160

Forfeiture/
symbols, or devices used
by a person to identify
and distinguish the goods
of that person, including
a unique product, from
those manufactured or
sold by others and to
indicate the source of the
goods, even if that source
is unknown.
(13) “Use” means the bona

fide use of a mark in the
ordinary course of trade
and not a use merely to
reserve a right in a mark.
For the purposes of this
part, a mark is considered
to be in use:
(a) on goods when:

(i) it is placed in
any manner on
the goods or
other containers
or the displays
associated with
the goods or on
the tags or labels
affixed to the
goods; or
(ii) if the nature
of the goods
makes placement
on the goods
or containers
impracticable,
it is placed on
documents asso-
ciated with the
goods or their
sale; and
(iii)
the goods
are sold or
transported in
commerce in
this state; and
(Continued)
162

Forfeiture/
(b) on services when it is
used or displayed in
the sale or advertising
of services and the
services are rendered
in this state.

Nebraska (1977)
Forfeiture/
Criminal Neb. Rev. Stat. (1) A person commits a criminal simulation when:
Simulation; §28-606 (a)With intent to deceive or harm, he makes,
Penalty alters, or represents an object in such fashion
that it appears to have an antiquity, rarity,
source or authorship, ingredient, or
composition that it does not in fact
See also: § 29-1503 have; or
Forgery; (b) With knowledge of its true character and
Instru- with intent to use to deceive or harm, he
ments; How §§ 28-602 (T), utters, misrepresents, or possesses any object
Described; 28-603 so simulated.
Forgery (2) Criminal simulation is a Class III misdemeanor.
and Related
Offenses;
Criminal § 28-605
Possession
of Forgery
Devices;
Penalty
(Continued)
164
Nevada (1911, amended 1967)

Forfeiture/
Destruction/
Coun- Nev. Rev. Every person who shall use or display or have in his State or Federal § 600.300
terfeiting Stat. or her possession with intent to use or display the Registration “Trademark” means any
Trade- §205.205 genuine label, trademark, term, design, device, or word, name, symbol or
mark or form of advertisement of any person, corporation, device, or any combina-
Design association or union lawfully filed for record according tion of them, adopted
to law of the State, or the exclusive right to use, and used by a person to
which is guaranteed to any person, corporation, identify goods made or
association, or union by the laws of the United States, sold by that person and
or of this State, without the written authority of such to distinguish them from
§ 205.210 person, corporation, association or union, or who goods made or sold

shall willfully forge or counterfeit or use or display by others.
or have in his or her possession with intent to use or
Selling, display any representation, likeness, similitude, copy § 205.210
Display- or imitation of any genuine label, trademark, term, 5. As used in this section,
ing, or design, device, or form of advertisement, so filed or “retail value” means:
Advertis- protected, or any die, plate, stamp or other device (a) If the item that
ing Goods for manufacturing the same, shall be guilty is identified by a
with False of a misdemeanor. label, trademark,
Trade- term, design,
mark device or form

1. A person shall not knowingly sell, display or of advertisement

advertise, or have in his or her possession with in violation of
intent to sell, any goods, wares, merchandise, subsection 1 is a
mixture, preparation or compound having affixed component of a fin-
thereto any label, trademark, term, design, device ished product with
or form of advertisement lawfully filed for record in multiple compo-
the Office of the Secretary of State by any person, nents, the price at
corporation, association or union, or the exclu- which the person
sive right to the use of which is guaranteed to the in violation of sub-
person, corporation, association or union under the section 1 regularly
laws of the United States, if the label, trademark, sells the finished
term, design, device or form of advertisement has product; or
been used or affixed thereto without the written (b) For any other item
authority of the person, corporation, association or that is identified by
union, or having affixed thereto any forged or coun- a label, trademark,
terfeit representation, likeness, similitude, copy or term, design,
imitation thereof. device or form
2. Except as otherwise provided in subsection 3, a of advertisement
violation of the provisions of subsection 1 is a in violation of
misdemeanor. subsection 1, the
3. A violation of the provisions of subsection 1 is: price at which the
(a) A category E felony if: person in violation
(1) The person committing the violation has of subsection 1
been previously convicted one time for a regularly sells
violation of the provisions of subsection the item.
1; or
(Continued)
166
Nevada (1911, amended 1967)

Forfeiture/
Destruction/
See also: § 205.090 (2) The goods, wares, merchandise, mixture,
Forgery of preparation or compound with respect to
Convey- § 600.450 which the person violated the provisions of
ances, subsection 1:
Negotia- (I) Consists of at least 100 but less than
ble Instru- 1,000 salable units; or
ments, (II) Has a retail value of at least $1,000 but
Stock less than $10,000.
Certif- (b) A category D felony if:
icates, (1) The person committing the violation has

Wills, and been previously convicted two or more
Other times for a violation of the provisions of
Instru- subsection 1; or
ments; (2) The goods, wares, merchandise, mixture,
Utterance preparation or compound with respect to
of Forged which the person violated the provisions of
Instru- subsection 1:
ment; (I) Consists of at least 1,000 salable units;
Unlawful or
Acts; (II) Has a retail value of at least $10,000.
Penalty

4. For the purposes of this section, in accordance with

the provisions of NRS 47.230, it may be reason-
ably inferred that a person intends to sell goods,
wares, merchandise, a mixture, a preparation or a
compound if the person knowingly possesses at least
26 salable units of the goods, wares, merchandise,
mixture, preparation or compound.
168
New Hampshire (7/15/2009, amended 2010, effective 7/13/10)
Forfeiture/
Dealing in N.H. Rev. II. Any person who purposely or know- I. In this section, IV. Any goods that bear or
Counterfeit Stat. ingly manufactures, displays, advertises, “counterfeit mark” consist of a counterfeit
Goods §638:6-b distributes, offers for sale, sells or possesses means a spurious mark used in committing
with intent to sell, or distributes any goods mark that: a violation of this section
bearing or identified by a counterfeit mark (a) Is applied to, or shall be subject to forfeiture
shall be guilty of a Class A misdemeanor attached to, or to the state of New
for a first offense and a Class B felony for used in connec- Hampshire and no property
any subsequent offense. Each individual tion with in any right shall exist in such
good bearing or identified by a counterfeit way, any goods, property. At the conclusion
mark shall constitute a separate offense. or packaging of of all criminal proceedings,

III. Evidence that a person had possession, such goods, or the court shall order such
custody, or control of more than 25 any other com- items be destroyed or
items bearing a counterfeit mark shall ponent of any disposed of in another
be prima facie evidence that the person type or nature manner with the written
had possession with the intent to sell or that is designed, consent of the trademark
distribute the items. marketed, owner.
or otherwise V.(a) The following property
intended to be is subject to forfeiture
used on or in for an offense under this
connection with section:
any goods;

(b) Is identical to, (1) Any property used

or substantially by the defendant
indistinguishable in any manner to
from, a mark facilitate, aid, or
registered under abet, a violation of
RSA 350-A, or this section; and
the laws of any (2) Any property con-
other state, or stituting or derived
that is recorded from any proceeds
on the principal obtained by the
register in the defendant, either
United States directly or indirectly,
Patent and as a result of a viola-
Trademark tion of this section.
Office and is in (b) Such property may
use, whether be seized by a law
or not the enforcement agency for
defendant knew forfeiture as follows:
the mark was (1) Pursuant to a search
registered; and warrant or seizure
(c) By the applica- warrant on an
tion or use of affidavit under oath
such mark, is demonstrating that
likely to cause probable cause exists
confusion, to for its forfeiture;
cause mistake, or
to deceive.
(Continued)
170
Forfeiture/
See also: § 638:1 (2) Physically, on
Forgery; probable cause to
Deceptive believe that the
Business § 638:6 property is subject
Practices to forfeiture; or
(3) Constructively, on
probable cause to
believe that the
property is subject
to forfeiture under
this section, by
recording a notice of
pending forfeiture in
the registry of deeds
in the county where
the real property
is located or at the
town clerk’s office
where the person’s
property is located
stating that the

state intends to seek

forfeiture of the
identified property
pursuant to this
section.
(c) A seizure for forfeiture
without process under
subparagraph (b)(2)
or (b)(3) shall be rea-
sonable if made under
circumstances in which
a warrantless seizure
or arrest would be valid
in accordance with
state law.
(d) The seizing agency shall
notify the defendant
within seven days of
any seizure of property
of its intent to forfeit
the property pursuant to
this section.
(Continued)
172
Forfeiture/
(e) The forfeiture of any
property or item under
this paragraph shall
be governed by RSA
595-A:6. The state
shall have the burden of
proving by a prepon-
derance of the evidence
that the property is
subject to forfeiture.
Except in the case of pro-
ceeds, upon a finding that
the property is subject to
forfeiture, the court shall
determine whether the
forfeiture of the property
is not excessive in
relation to the underlying
criminal offense. In mak-
ing this determination,
the court shall

consider whether
in addition to any
pertinent consider-
ations:
(1) There is a substantial
connection between
the property to be
forfeited and the under-
lying offense;
(2) Criminal activities con-
ducted by or through
the use of the property
were extensive; and
(3) The value of the
property to be forfeited
greatly outweighs the
cost of prosecution and
the harm caused by the
criminal conduct.
(f) Final orders for
forfeiture shall be
implemented by the
seizing agency and
all proceeds of the
forfeiture shall go to
that agency.
(Continued)
174
Forfeiture/
(g) At the request of
any party to the for-
feiture proceeding,
the court shall grant
a continuance until
the final resolution
of any criminal
proceedings, which
were brought against
a party under this

section and which
arose from the
transaction, which
gave rise to the for-
feiture proceeding.
No party’s interest
in property shall be
forfeited unless a
party has been found
guilty of the under-
lying charge.

VI. The court may order a

person convicted under this
section to pay restitution
pursuant to RSA 651:63 to
the trademark owner and
to any other person the
court may determine. Any
restitution ordered by the
court shall include, but is
not limited to, attorney’s
fees, court costs, and any
other expenses incurred by
the trademark owner in the
investigation and prosecu-
tion of the case.
176
New Jersey (4/1/97, amended 1/4/2000, effective 1/4/2000)

Forfeiture/
Destruction/
Trade- N.J. Stat. a. This act shall be known and may be cited as f. For purposes of this b. As used in this act: e. All items bearing a
mark Ann. the “New Jersey Trademark Counterfeiting act: (1) “Counterfeit mark” counterfeit mark, and
Counter- §2C:21-32 Act.” (2) any State means a spurious all personal property,
feiting; c. A person commits the offense of coun- or federal mark that is identical including but not
Defini- terfeiting who, with the intent to deceive certificate of with or substantially limited to, any items,
tions; or defraud some other person, knowingly registration indistinguishable objects, tools, machines,
Offenses manufactures, uses, displays, advertises, of any from a genuine mark equipment, instrumen-
distributes, offers for sale, sells, or possesses intellectual that is registered on talities or vehicles of
with intent to sell or distribute within, or property shall the principal reg- any kind, employed
in conjunction with commercial activities be prima facie ister in the United or used in connection
within New Jersey, any item, or services, evidence of States Patent and with a violation of this
bearing, or identified by, a counterfeit mark. the facts stated Trademark Office act, shall be subject to
A person who has in his possession or therein. or registered in the forfeiture in accordance
under his control more than 25 items New Jersey Secretary with the procedures set
bearing a counterfeit mark shall be pre- of State’s office or a forth in chapter 64 of
sumed to have violated this section. spurious mark that Title 2C of the New
d. (1) An offense set forth in this act shall is identical with or Jersey Statutes.
be punishable as a crime of the fourth substantially indis-
degree if: tinguishable from the
words, names,
the offense involves fewer than 100 symbols, emblems,

items bearing a counterfeit mark; signs, insignias or any

the offense involves a total retail combination thereof,
value of less than $1,000 for all items of the United States
bearing, or services identified by, a Olympic Committee
counterfeit mark; or or the International
the offense involves a first conviction Olympic Committee;
under this act. and that is used or is
(2) An offense set forth in this act shall intended to be used
be punishable as a crime of the third on, or in conjunc-
degree if: tion with, goods or
the offense involves 100 or more but services for which
fewer than 1,000 items bearing a coun- the genuine mark is
terfeit mark; the offense involves a total registered and in use.
retail value of $1,000 or more but less (2) “Retail value” means
than $15,000 of all items bearing, or ser- the counterfeiter’s
vices identified by, a counterfeit mark; or regular selling price
the offense involves a second for the item or service
conviction under this act. bearing or identified
(3) An offense set forth in this act shall be pun- by the counterfeit
ishable as a crime of the second degree if: mark. In the case of
the offense involves 1,000 or more items items bearing a coun-
bearing a counterfeit mark; the offense terfeit mark, which
involves a total retail value of $15,000 or are components of a
more of all items bearing, or services iden- finished product, the
tified by a counterfeit mark; or the offense retail value shall be
involves a third or subsequent conviction
under this act.

(Continued)
178
New Jersey (4/1/97, amended 1/4/2000, effective 1/4/2000)

Forfeiture/
Destruction/
See also: § 2C:21-2 In addition, any person convicted under the counterfeiter’sregular
Criminal this act, notwithstanding the provisions of selling price of the finished
Simu- § 2C:21-1(T) N.J.S.2C:43-3, shall be fined by the court product on or in which
lation; an amount up to threefold the retail value the component would
Forgery of the items or services involved, providing be utilized.
and that the fine imposed shall not exceed
Related the following amounts: for a crime of the
Offenses fourth degree, $100,000; for a crime of the
third degree, $250,000; and for a crime of
the second degree, $500,000.

f. For purposes of this act:
(1) the quantity or retail value of items
or services shall include the aggre-
gate quantity or retail value

of all items bearing, or services

identified by, every counterfeit mark
the defendant manufactures, uses,
displays, advertises, distributes, offers
for sale, sells, or possesses;
g. Conviction for an offense under this
act does not preclude the defendant’s
liability for the civil remedy available
pursuant to section 2 of P.L.1987, c.
454 (C.56:3-13.16).

180
New Mexico (1963, amended 7/1/2006)

Forfeiture/
Destruction/
Forgery N.M. Stat. A. Forgery consists of: § 57-3B-3 § 57-3B-16
Ann. (1) falsely making or altering any signature to, or
§30-16-10 any part of, any writing purporting to have C. “mark” includes any Any owner of a mark
any legal efficacy with intent to injure or trademark or service registered under the
defraud; or mark entitled to Trademark Act may
(2) knowingly issuing or transferring a forged registration under proceed by suit to enjoin
writing with intent to injure or defraud. the Trademark Act the manufacture, use,
B. Whoever commits forgery when there is no quan- whether registered display or sale of any
tifiable damage or when the damage is $2,500 or or not; counterfeits or imita-
less is guilty of a fourth degree felony. D. “person” and any tions of that mark and
C. Whoever commits forgery when the damage is other word or term any court of competent
over $2,500 but not more than $20,000 is guilty of used to designate the jurisdiction may grant
a third degree felony. applicant or other injunctions to restrain
D. Regardless of value, whoever commits forgery of party entitled to a the manufacture, use,
a will, codicil, trust instrument, deed, mortgage, benefit or privilege display or sale as may be
lien, or any other instrument affecting title to real or rendered liable deemed just and reason-
property is guilty of a third degree felony. under the provisions able by the court. The
E. Whoever commits forgery when the damage is of the Trademark Act, court may require the
over $20,000 is guilty of a second degree felony. includes a juristic defendants to pay to the
person as well as a owner all

natural person; “juris- profits derived from or

tic person” includes all damages suffered by
a firm, partnership, reason of the wrongful
corporation, union, manufacture, use, dis-
association or other play or sale, or by both
organization capable payment of all profits
of suing and being derived and damages
sued in a court of law; suffered. The court
H. “trademark” means may also order that any
any word, name, counterfeits or imita-
symbol, device or any tions in the possession
combination of these or under the control of
used by a person to any defendant in the
identify and distin- case be delivered to an
guish the goods of the officer of the court or
person, including a to the complainant and
unique product, from that the counterfeits or
those manufactured or imitations be destroyed
sold by others, and to
indicate the source of
the goods, even if that
source is unknown;
(Continued)
182
New Mexico (1963, amended 7/1/2006)

Forfeiture/
Destruction/
I. “trade name” means
any name used by a
person to identify a
business or vocation of
the person; and
J. “use” means the bona
fide use of a mark in
the ordinary course of
trade and not made
merely to reserve a
right in the mark. For
the purposes of the
Trademark Act, a mark
is deemed to be in use:
(1) on goods when it is
placed in any man-
ner on the goods or
on the containers
or the displays
associated

with it or on the
tags or labels
affixed to them,
or if the nature of
the goods makes
the placement
impracticable,
then on documents
associated with the
goods or their sale,
and the goods are
sold or transported
in commerce in
this state; and
(2) on services when
it is used or dis-
played in the sale
or advertising of
services and
the services
are rendered in
this state.
184
New York (11/92, amended 11/1/95)

Forfeiture/
Destruction/
Trade- N.Y. Penal L. A person is guilty of trademark counterfeiting in Any State 1. The term “trademark” § 165.74
mark §165.71 the third degree when, with the intent to deceive or or Federal means (a) any word,
Counter- defraud some other person or with the intent to evade Registration name, symbol, or Any goods
feiting in a lawful restriction on the sale, resale, offering for device, or any combi- manufactured, sold,
the Third sale, or distribution of goods, he or she manufactures, nation thereof adopted offered for sale,
Degree distributes, sells, or offers for sale goods that bear a and used by a person distributed or produced
counterfeit trademark, or possesses a trademark know- to identify goods made in violation of this
Trade- § 165.72 ing it to be counterfeit for the purpose of affixing it to by a person and which article may be seized
mark any goods. distinguish them from by any police officer.
Coun- Trademark counterfeiting in the third degree is a those manufactured or The magistrate must,
terfeiting Class A misdemeanor. sold by others, which within forty-eight hours
in the A person is guilty of trademark counterfeiting in is in use and which after arraignment of the
Second the second degree when, with the intent to deceive or is registered, filed or defendant, determine
Degree defraud some other person or with the intent to evade recorded under the whether probable
a lawful restriction on the sale, resale, offering for laws of this state or of cause exists to believe
sale, or distribution of goods, he or she manufactures, any other state or is that the goods had
distributes, sells, or offers for sale goods that bear a registered in the prin- been manufactured,
counterfeit trademark, or possesses a trademark know- cipal register of the sold, offered for sale,
ing it to be counterfeit for the purpose of affixing it United States patent distributed or produced
to any goods, and the retail value of all such goods and trademark office; in violation of
bearing counterfeit trademarks exceeds $1,000. this article,

Trade- § 165.73 Trademark counterfeiting in the second degree is a or (b) the symbol and upon a finding that
mark Class E felony. of the International probable cause exists to
Counter- A person is guilty of trademark counterfeiting in Olympic Committee, believe that the goods
feiting in the first degree when, with the intent to deceive consisting of five had been manufac-
the First or defraud some other person, or with the intent interlocking rings; the tured, sold, offered for
Degree to evade a lawful restriction on the sale, resale, emblem of the United sale, distributed, or
offering for sale, or distribution of goods, he or she States Olympic Com- produced in violation
manufactures, distributes, sells, or offers for sale mittee, consisting of of this article, the court
goods that bear a counterfeit trademark, or possesses an escutcheon having shall authorize such
a trademark knowing it to be counterfeit for the a blue chief and articles to be retained
purpose of affixing it to any goods, and the retail vertically extending as evidence pending the
value of all such goods bearing counterfeit trademarks red and white bars trial of the defendant.
exceeds $100,000. on the base with five Upon conviction of the
Trademark counterfeiting in the first degree is a interlocking rings defendant, the articles
Class C felony. displayed on the chief; in respect whereof
any trademark, trade the defendant stands
name, sign, symbol, convicted shall be
or insignia falsely rep- destroyed. Destruction
resenting association shall not include auc-
with, or authorization tion, sale or distribution
by, the International of the items in their
Olympic Committee original form.
or the United States
Olympic Committee;
or the words “Olym-
pic,” “Olympiad,”
(Continued)
186

Forfeiture/
Destruction/
See also: § 170.45 “CitiusAltiusFortius,”
Criminal or any combination
Simula- §§170.00 thereof tending to
tion; et seq. cause confusion, to
Forgery; cause mistake, to
§ 165.30 deceive, or to falsely
Fraud- suggest a connection
ulent with the United States
Accosting Olympic Committee
or any International
Olympic Committee
or United States
Olympic Committee
activity.
2. The term “counterfeit
trademark” means a
spurious trademark or
an imitation of a trade-
mark that is:

(a) used in connec-
tion with traffick-
ing in goods; and
(b) used in connec-
tion with the sale,
offering for sale
or distribution
of goods that are
identical with
or substantially
indistinguishable
from a trademark
as defined in
subdivision one of
this section.
The term
“counterfeit
trademark” does
not include any
mark used in
connection with
goods for which
the person using
(Continued)
188

Forfeiture/
Destruction/
such mark was
authorized to use
the trademark for
the type of goods
so manufactured
or produced by the
holder of the right
to use such mark
or designation,
whether or not
such goods were
manufactured or
produced in the
United States or
in another coun-
try, and does not
include imitations
of trade dress
or packaging such
as color, shape

and the like

unless those
features have been
registered as trade-
marks as defined
in subdivision one
of this section.
3. The term “traffic”
means to transport,
transfer, or otherwise
dispose of, to another,
as consideration for
anything of value,
or to obtain control
of with intent to so
transport, transfer, or
otherwise dispose of.
4. The term “goods”
means any products,
services, objects,
materials, devices, or
substances, which are
identified by the use of
a trademark.
190
North Carolina (12/1/95)

Forfeiture/
Destruction/
Criminal N.C. Gen. (b) Any person who knowingly and willfully (i) uses State or Federal (a) For purposes of this (d) Any personal prop-
Use of Stat. Ann. or causes to be used a counterfeit mark on or in Registration or the section: erty, including any
Coun- §80-11.1 connection with goods or services intended for Amateur Sports (1) “Counterfeit mark” item, object, tool,
terfeit sale or (ii) has possession, custody, or control of Act of 1978 means a mark that machine, device, or
Trade- goods having a counterfeit mark used thereon or is used in connec- vehicle of any kind,
mark in connection therewith, that are intended for § 80-13 tion with the sale employed as an
sale, shall be punished as follows: or offering for sale instrumentality in
(1) If the goods or services having a counter- Nothing herein of goods or services the commission of,
feit mark used thereon or in connection shall adversely that are identical or in aiding or abet-
therewith, or on or in connection with affect the rights or to or substantially ting in the commis-
which the person intends to use a coun- the enforcement indistinguishable from sion of a violation
terfeit mark, have a retail sales value not of rights in marks the goods or services of subsection (b) or
exceeding $3,000, the person is guilty of a acquired in good with which the mark (c) of this section,
Class 2 misdemeanor; faith at any time at is used or registered, is subject to seizure
(2) If the goods or services having a counter- common law. and the use of which and forfeiture and
feit mark used thereon or in connection is likely to cause shall be disposed
therewith, or on or in connection with confusion, mistake, or of in accordance
which the person intends to use a counter- deception, with the with the provisions
feit mark, have a retail sales value exceed- use occurring without of Article 2 of
ing $3,000 but not exceeding $10,000, the authorization of the: Chapter 15 of the
person is guilty of a Class I felony; and General Statutes.

(3) If the goods or services having a counterfeit a. Owner of the

mark used thereon or in connection registered mark,
therewith, or on or in connection and is identical
with which the person intends to use a to or substantially
counterfeit mark, have a retail sales value indistinguishable
exceeding $10,000, the person is guilty of a from a mark that
Class H felony. is registered on the
The possession, custody, or control of principal register
more than 25 items having a counterfeit of the United
mark used thereon or in connection there- States Patent and
with creates a presumption that the person Trademark Office or
having possession, custody, or control of with the Trademark
the items intended to sell those items. Division of the
(c) Any person who knowingly (i) uses any object, Department of the
tool, machine, or other device to produce Secretary of State;
or reproduce a counterfeit mark or (ii) has or
possession, custody, or control of any object, b. Owner of the
tool, machine, or device with intent to produce unregistered mark
or reproduce a counterfeit mark, is guilty of a and is identical
Class H felony. to or substantially
(e) For purposes of enforcing this section, the indistinguishable
Department of the Secretary of State’s law from symbols, signs,
enforcement agents have statewide jurisdiction. emblems, insignias,
These law enforcement agents may assist local trademarks, trade
law enforcement agencies in their investiga- names, or words
tions and may initiate and carry out, protected by section
110 of the Amateur
(Continued)
192
North Carolina (12/1/95)

Forfeiture/
Destruction/
See also: § 14-120 in coordination with local law enforcement Sports Act of 1978
Uttering agencies, investigations of violations of this (Title 36, U.S.C.
Forged section. These law enforcement agents have all § 380).
Paper or of the powers and authority of law enforcement (2) “Retail sales value”
Instru- officers when executing arrest warrants. These means the value com-
ment agents shall be authorized to have fictitious puted by multiplying
Con- licenses, license tags, and registrations, pursu- the number of items
taining ant to G.S. 20-39(h) or G.S. 14-250, for the having a counterfeit
a Forged purpose of conducting criminal investigations. mark used thereon
Endorse- (f) The Secretary of State may refer any available or in connection

ment evidence concerning violations of this section therewith, by the
to the proper district attorney, who may, with retail price at which a
or without such a reference, institute the appro- similar item having a
priate criminal proceedings. mark used thereon or
The attorneys employed by the Secretary of in connection there-
State shall be available to prosecute or assist with, the use of which
in the prosecution of criminal cases when is authorized by the
requested to do so by a district attorney and the owner, is offered for
Secretary of State approves. sale to the public.

(g) Pursuant to an agreement between the

departments, the Secretary of State may refer
any available evidence concerning violations
of this section to the Secretary of Revenue for
purposes of determining the obligations of the
violators of this section to the State under
the provisions of Chapter 105 of the
General Statutes.
194
North Dakota (1973)

Forfeiture/
Destruction/
Forgery or N.D. Cent. 1. A person is guilty of forgery or counterfeiting if, § 12.1-24-04
Counter- Code with intent to deceive or harm the government
feiting §12.1-24-01 or another person, or with knowledge that he is 13. “Writing” means:
(T) facilitating such deception or harm by another a. Any paper, document,
person, he: or other instrument
a. Knowingly and falsely makes, completes, or containing written or
alters any writing; or printed matter or its
b. Knowingly utters or possesses a forged or coun- equivalent, including
terfeited writing. money, a money order,
2. Forgery or counterfeiting is: bond, public record,

a. A Class B felony if: affidavit, certificate,
(1) The actor forges or counterfeits an obliga- contract, security, or
tion or other security of the government; or obligation.
(2) The offense is committed pursuant to a b. Any coin or any gold
scheme to defraud another or others or silver bar coined or
of money or property of a value in stamped at a mint or
excess of $10,000. assay office or any signa-
b. A Class C felony if: ture, certification, credit
card, token, stamp, seal,
badge, decoration,

See also: § 51-07-04 (1) The actor is a public servant or an officer or medal, trademark,
Selling employee of a financial institution and the or other symbol or
Goods offense is committed under color of office or evidence of value, right,
Bearing is made possible by his office; privilege, or identifica-
Coun- (2) The actor forges or counterfeits foreign tion, which is capable
terfeit money or other legal tender, or utters of being used to the
Trade- or possesses any forged or counterfeited advantage or disadvan-
mark - obligation or security of the government or tage of the government
Penalty foreign money or legal tender; or any person.
(3) The actor forges or counterfeits any writing
from plates, dies, molds, photographs, or
other similar instruments designed for
multiple reproduction;
(4) The actor forges or counterfeits a writing,
which purports to have been made by the
government; or
(5) The offense is committed pursuant to a
scheme to defraud another or others of
money or property of a value in
excess of $100.
c. A Class A misdemeanor in all other cases.
196
Ohio (1997)
Forfeiture/
Destruction/
Trade- Baldwin’s (A) No person shall knowingly do any of the State or Federal (F) As used in this section: (D)(1) Law enforcement
mark Ohio Rev. following: Registration (1)(a) Except as provided officers may
Counter- Code Ann. (1) Attach, affix, or otherwise use a in division (F)(1) seize pursuant to
feiting §2913.34 counterfeit mark in connection with (b) of this section, Criminal Rule
the manufacture of goods or services, “counterfeit mark” 41 or Chapter
whether or not the goods or services means a spurious 2933. or 2981.
are intended for sale or resale; trademark or a spuri- of the Revised
(2) Possess, sell, or offer for sale tools, ous service mark Code either of the
machines, instruments, materials, that satisfies both of following:
articles, or other items of personal the following: (a) Goods to

property with the knowledge that (i) It is identical which or in
they are designed for the production with or substan- connection
or reproduction of counterfeit marks; tially indistin- with which
(3) Purchase or otherwise acquire goods, guishable from a person
and keep or otherwise have the goods a mark that is attached,
in the person’s possession, with the registered on the affixed, other-
knowledge that a counterfeit mark is principal register wise used, or
attached to, affixed to, or otherwise in the United intended to
used in connection with the goods States patent attach, affix,
and with the intent to sell or other- and trademark or otherwise
wise dispose of the goods;

(4) Sell, offer for sale, or otherwise office for the use a counter-
dispose of goods with the knowledge same goods or feit mark in
that a counterfeit mark is attached services as the violation of
to, affixed to, or otherwise used in goods or services this section;
connection with the goods; to which or (b) Tools,
(5) Sell, offer for sale, or otherwise pro- in connection machines,
vide services with the knowledge that with which the instruments,
a counterfeit mark is used in connec- spurious trade- materials,
tion with that sale, offer for sale, or mark or spurious articles,
other provision of the services. service mark vehicles, or
(B)(1) Whoever violates this section is guilty is attached, other items
of trademark counterfeiting. affixed, or oth- of personal
(2) Except as otherwise provided in this erwise used or property that
division, a violation of division (A) from a mark that are possessed,
(1) of this section is a felony of the is registered with sold, offered
fifth degree. Except as otherwise the secretary of for sale, or
provided in this division, if the state pursuant to used in a
cumulative sales price of the goods or sections 1329.54 violation of
services to which or in connection to 1329.67 of this section or
with which the counterfeit mark is the Revised in an attempt
attached, affixed, or otherwise used in Code for the to commit or
the offense is $5,000 or more but less same goods or complicity
than $1,000 or if the number of units services as the in the
of goods to which or in connection goods or services commission of
with which the counterfeit mark is to which or in a violation of
attached, affixed, or otherwise used connection this section.
(Continued)
198
Ohio (1997)
Forfeiture/
Destruction/
in the offense is more than 100 units with which the (2) Notwithstanding
but less than 1,000 units, a violation spurious trade- any contrary
of division (A)(1) of this section is mark or spurious provision of
a felony of the fourth degree. If the service mark Chapter 2981.
cumulative sales price of the goods or is attached, of the Revised
services to which or in connection affixed, or oth- Code, if a person
with which the counterfeit mark is erwise used, and is convicted of
attached, affixed, or otherwise used in the owner of the or pleads guilty
the offense is $100,000 or more or if registration uses to a violation of
the number of units of goods to which the registered this section, an

or in connection with which the mark, whether attempt to violate
counterfeit mark is attached, affixed, or not the this section, or
or otherwise used in the offense is offender knows complicity in a
$100,000 or more or if the number of that the mark violation of this
units of goods to which or in connec- is registered section, the court
tion with which the counterfeit mark in a manner involved shall
is attached, affixed, or otherwise used described in declare that the
in the offense is 1,000 units or more, division (F)(1) goods described
a violation of division (A)(1) of this (a)(i) of this in division (D)(1)
section is a felony of the third degree. section. (a) of this section

(3) Except as otherwise provided in this (ii) Its use is likely and the personal
division, a violation of division (A) to cause confu- property described
(2) of this section is a misdemeanor of sion or mistake in division (D)(1)
the first degree. If the circumstances of or to deceive (b) of this section
the violation indicate that the tools, other persons. are contraband
machines, instruments, materials, (b) “Counterfeit mark” and are forfeited.
articles, or other items of personal does not include Prior to the
property involved in the violation a mark or other court’s entry of
were intended for use in the commis- designation that is judgment under
sion of a felony, a violation of division attached to, affixed Criminal Rule
(A)(2) of this section is a felony of to, or otherwise used 32, the owner of
the fifth degree. in connection with a registered trade-
(4) Except as otherwise provided in this goods or services if mark or service
division, a violation of division (A) the holder of the mark that is the
(3), (4), or (5) of this section is a mis- right to use the mark subject of the
demeanor of the first degree. Except as or other designation counterfeit mark
otherwise provided in this division, if authorizes the manu- may recommend
the cumulative sales price of the goods facturer, producer, or a manner in
or services to which or in connection vendor of those goods which the for-
with which the counterfeit mark is or services to attach, feited goods and
attached, affixed, or otherwise used affix, or otherwise use forfeited personal
in the offense is 1,000 dollars or more the mark or other des- property should
but less than $7,500, a violation of ignation in connec- be disposed of. If
division (A)(3), (4), or (5) of this tion with those goods that owner makes
section is a felony of the fifth degree. or services at the time a timely recom-
Except as otherwise provided in this of their manufacture, mendation
production, or sale.
(Continued)
200
Ohio (1997)
Forfeiture/
Destruction/
division, if the cumulative sales price (2) “Cumulative sales of a manner
of the goods or services to which or in price” means the of disposition,
connection with which the coun- product of the lowest the court is not
terfeit mark is attached, affixed, or single unit sales price bound by the
otherwise used in the offense is $7,500 charged or sought to be recommendation.
or more but less than $150,000 or if charged by an offender If that owner
the number of units of goods to which for goods to which or in makes a timely
or in connection with which the connection with which recommendation
counterfeit mark is attached, affixed, a counterfeit mark of a manner of
or otherwise used in the offense is is attached, affixed, disposition, the

more than 100 units but less than or otherwise used or court may include
1,000 units, a violation of division of the lowest single in its entry of
(A)(3), (4), or (5) of this section is service transaction judgment an
a felony of the fourth degree. If the price charged or sought order that requires
cumulative sales price of the goods or to be charged by an appropriate
services to which or in connection offender for services in persons to dispose
with which the counterfeit mark is connection with which of the forfeited
attached, affixed, or otherwise used in a counterfeit mark is goods and
the offense is $150,000 or more or if used, multiplied by the forfeited personal
the number of units of goods to which total number of property

See also: § 2913.32 or in connection with which the those goods or services, in the recom-
Criminal counterfeit mark is attached, affixed, whether or not units of mended manner.
Simula- § 2913.31(T) or otherwise used in the offense is goods are sold or are in If that owner fails
tion; 1,000 units or more, a violation of an offender’s possession, to make a timely
Forgery; division (A)(3), (4), or (5) of this custody, or control. recommendation
forging section is a felony of the third degree. (3) “Registered trademark of a manner of
identi- (C) A defendant may assert as an affirmative or service mark” means disposition or if
fication defense to a charge of a violation of this a trademark or service that owner makes
cards section defenses, affirmative defenses, and mark that is registered a timely recom-
limitations on remedies that would be in a manner described mendation of
available in a civil, criminal, or admin- in division (F)(1) of the manner of dis-
istrative action or proceeding under the this section. position but the
“Lanham Act,” 60 Stat. 427-443 (1946), (4) “Trademark” and court determines
15 U. S.C. 1051-1127, as amended, “service mark” have the to not follow the
“The Trademark Counterfeiting Act of same meanings as in recommendation,
1984,” 98 Stat. 2178, 18 U.S.C. 2320, as section 1329.54 of the the court shall
amended, Chapter 1329. or another sec- Revised Code. include in its
tion of the Revised Code, or common law. entry of judgment
(E) This section does not affect the rights of an order that
an owner of a trademark or a service mark, requires the law
or the enforcement in a civil action or in enforcement
administrative proceedings of the rights agency that
of an owner of a trademark or a service employs the law
mark, under the “Lanham Act,” 60 Stat. enforcement offi-
427-443 (1946), 15 U.S.C. 1051-1127, as cer who seized the
amended, “The Trademark Counterfeit forfeited goods
(Continued)
202
Ohio (1997)
Forfeiture/
Destruction/
ing Act of 1984,” 92 Stat. 2178, 18 U.S. or the forfeited
C. 2320, as amended, Chapter 1329. or personal property
another section of the Revised Code, or to destroy them
common law. or cause their
destruction.

Oklahoma (1999)
Forfeiture/
Destruction/
Use, 21 Okla. Stat. A. Except as provided in subsections B and I. Any certificate For the purposes of this act: F. In any criminal
Possession, Ann. §1990.2 C of this section, a person who knowingly of registration 1. “Counterfeit mark” means: proceeding in which
Distribu- and with intent to sell or distribute, uses, of any intellec- a. any unauthorized repro- a person is convicted
tion, Man- displays, advertises, distributes, offers for tual property duction or copy of intel- of a violation of
ufacture, sale, sells or possesses any item that bears pursuant to lectual property, and any provision of
Etc. of Item a counterfeit mark or any service that is state or federal b. intellectual property that this section, the
Bearing identified by a counterfeit mark shall, upon law is prima is affixed to any item that court may order the
Counterfeit conviction, be guilty of a misdemeanor facie evidence is knowingly sold, offered convicted person to
Mark – punishable by imprisonment in the county of the facts for sale, manufactured pay restitution to the
Penalties – jail not exceeding one year or by a fine not stated in the or distributed or to any intellectual property
Seizure and exceeding $1,000 or by both such fine and certificate of identifying services offered owner in addition to
Forfeiture imprisonment. registration or rendered without the any other provision
– Civil B. Any person who commits any prohibited act and may be authority of the intellec- allowed by law.
Actions – proscribed in subsection A of this section used at trial. tual property owner; G. The investigating
Damages shall, upon conviction, be guilty of a Sched- 2. “Intellectual property” means law enforcement
and Attor- ule G felony punishable as provided in the any trademark, service mark, officer may seize any
ney Fees state’s sentencing matrix, or by a fine of not trade name, label, term, item that bears a
more than the retail value of such items or device, design or word that is counterfeit mark and
services or both such fine and imprisonment, adopted or used by a person all other personal
if either: to identify that person’s goods property that is
or services; and
(Continued)
204
Oklahoma (1999)
Forfeiture/
Destruction/
1. The person has one previous conviction 3. “Retail value” means: employed or used in
under any provision of this section; or a. for items that bear a coun- connection with a
2. At least one of the following exists: terfeit mark and that are violation of this sec-
a. the violation involves more than 100 components of a finished tion, including any
but fewer than 1,000 items that bear product, the counterfeit- items, objects, tools,
the counterfeit mark, or er’s regular selling price of machines, equip-
b. the total retail value of all of the items the finished product on or ment, instrumental-
or services that bear or are identified in which the component ities or vehicles. All
by the counterfeit mark is more than would be utilized, or personal property
$1,000 but less than $10,000. b. for all other items that seized pursuant to
C. Any person who knowingly manufactures bear a counterfeit mark or this section shall be
or produces with intent to sell or distribute services that are identified subject to forfeiture
any item that bears a counterfeit mark or by a counterfeit mark, according to Section
any service that is identified by a counterfeit the counterfeiter’s regular 1738 of Title 21
mark shall, upon conviction, be guilty of a selling price for those of the Oklahoma
Schedule F felony punishable as provided items or services. Statutes.
in the state’s sentencing matrix, or by a fine H. After a forfeiture has
not exceeding three times the retail value of been ordered by the
such items or services, or by both such fine district court, a law
and imprisonment. enforcement officer

D. Any person who commits any prohibited shall destroy all

act proscribed by subsection A of this seized items that
section shall, upon conviction, be guilty of bear a counterfeit
a Schedule E felony punishable as provided mark; however, if
in the state’s sentencing matrix, or by a fine the counterfeit mark
not exceeding three times the retail value of is removed from
such items or services, or by both such fine the seized items,
and imprisonment if either: the intellectual
1. The person has two or more previous property owner may
convictions under this section; or recommend to the
2. At least one of the following exists: court that the seized
a. the violation involves at least 1,000 items be donated
items that bear the counterfeit mark, or to a charitable
b. the total retail value of all of the items organization.
or services that bear or are identified
by the counterfeit mark is
at least $10,000.
E. For purposes of this section, any person who
knowingly has possession, custody or control
of at least 26 items that bear a counterfeit
mark is presumed to possess the items with
intent to sell or distribute the items.
(Continued)
206
Oklahoma (1999)
Forfeiture/
Destruction/
J. In addition to other remedies allowed by
law, an intellectual property owner who
sustains a loss as a result of any violation of
this section may file a civil action against
the defendant for recovery of up to treble
damages and the costs of the suit including
reasonable attorney fees.
K. The remedies provided in this section are
cumulative to all other civil and criminal
remedies provided by law.

L. For the purposes of this section, the quantity
or retail value of items or services includes
the aggregate quantity or retail value of
all items that the defendant manufactures,
uses, displays, advertises, distributes, offers
for sale, sells or possesses and that bear a
counterfeit mark or that are identified by a
counterfeit mark.

Oregon (1999) (§ 647.155 amended 7/31/2005)

Forfeiture/
Destruction/
Counter- Ore. Rev. Stat. (1) A person commits trademark counterfeiting § 647.155 (2) For purposes of this § 647.155
feiting of §647.135 if the person knowingly and with the intent section, a mark is coun-
(1) The following are
Trade- to sell or distribute and without the consent (1) The provi- terfeit if:
subject to seizure
mark of the registrant uses, displays, advertises, sions of this (a) It is a mark that
and forfeiture in the
§ 647.140 distributes, offers for sale, sells or possesses chapter do is identical to or
same manner as the
any item that bears a counterfeit of a mark not adversely substantially indis-
proceeds of prohibited
or any service that is identified by a counter- affect the tinguishable from a
conduct under ORS
Trade- feit of a mark registered under this chapter rights or the registered mark; and
chapter 131A:
mark or registered under this chapter or registered enforcement (b) It is used on or in
(a) All raw materials
Counter- under 15 U.S.C. 1052 with knowledge that of rights in connection with
and equipment
feiting in the mark is counterfeit. marks or the same type of
that are used,
the Third (3) A person does not commit trademark trade names goods or services for
or intended for
Degree; counterfeiting if the person has adopted acquired in which the genuine
use, in providing,
Penalty and lawfully used the same or a confusingly good faith at mark is registered.
manufacturing
similar mark in the rendition of like services any time at
and delivering
or the manufacture of like goods in this state common law.
items bearing
from a date before the effective date of regis-
a counterfeit
tration of the service mark or trademark and
mark or services
continues to use the mark after the effective
identified by a
date of registration.
counterfeit mark;
(Continued)
208
Oregon (1999) (§ 647.155 amended 7/31/2005)

Forfeiture/
Destruction/
(1) A person commits the crime of trademark (b) All conveyances
counterfeiting in the third degree if the that are used, or
person commits trademark counterfeiting as intended for use,
described in ORS 647.135 and: to transport items
(a) The total number of items bearing the bearing a coun-
counterfeit mark is not more than 100; or terfeit mark;
(b) The total retail value of all of the items (c) All books,
bearing the counterfeit mark or services records, com-
that are identified by the counterfeit puters and data
mark is not more than $1,000. that are used or

(2) Trademark counterfeiting in the third intended for use
degree is a Class A misdemeanor. Notwith- in the produc-
standing ORS 161.655, if the person con- tion, manu-
victed under this section is a corporation, facture, sale or
the maximum fine that may be imposed delivery of items
is $100,000. bearing a coun-
(1) A person commits the crime of trademark terfeit mark or
counterfeiting in the second degree services identified
if the person: by a counterfeit
mark; and

Trade- § 647.145 (a) Commits trademark counterfeiting as (d) All moneys,

mark described in ORS 647.135 and: negotiable instru-
Coun- (A) Has one prior conviction for trade- ments, balances
terfeiting mark counterfeiting in any degree; in deposit or
in the (B) The total number of items bearing other accounts,
Second the counterfeit mark is more than securities or
Degree; 100 but less than 1,000; or other things of
Penalty (C) The total retail value of all of the value furnished
items bearing the counterfeit mark or intended to
or services that are identified by be furnished by
the counterfeit mark is more than any person in the
$1,000 but less than $10,000. course of activity
(b) Knowingly manufactures or produces constituting a
with intent to sell or distribute any violation of ORS
item that bears a counterfeit mark 647.140, 647.145
or any service that is identified by a or 647.150.
counterfeit mark. (2) Items bearing a
(2) Trademark counterfeiting in the second counterfeit mark are
degree is a Class C felony. However, not- subject to seizure
withstanding ORS 161.655, if the person is and disposition as
convicted under: provided in ORS
(a) Subsection (1)(a)(A) of this section and 133.525 to 133.703.
is a corporation, the maximum fine that However, if the regis-
may be imposed is $200,000. trant so requests, the
agency holding
(Continued)
210
Oregon (1999) (§ 647.155 amended 7/31/2005)

Forfeiture/
Destruction/
Trade- § 647.150 (b) Subsection (1)(b) of this section and the seized items shall
mark the person has one prior conviction for release the seized
Counter- trademark counterfeiting in any degree items to the registrant
feiting in and is a corporation, the maximum fine or make such other
the First that may be imposed is $200,000. disposition as the reg-
Degree; (1) A person commits the crime of trademark istrant directs. If the
Penalty counterfeiting in the first degree if the registrant does not
person commits trademark counterfeiting as direct disposition of
described in ORS 647.135 or 647.145 (1) the seized items, the
(b) and: agency shall destroy

(a) Has two or more prior convictions for the items.
trademark counterfeiting in any degree;
(b) The total number of items bearing the
counterfeit mark is 1,000 or more; or
(c) The total retail value of all of the items
bearing the counterfeit mark or services
that are identified by the counterfeit
mark is $10,000 or more.
(2) Trademark counterfeiting in the first degree
is a Class B felony.

Pennsylvania (6/6/73, amended 10/16/96, amended 10/19/10, effective 12/20/10)

Forfeiture/
Destruction/
Trademark 18 Pa. (a) Offense defined—Any person who knowingly (g) Evidence—Any (i) Definitions—As (f) Seizure, forfeiture
Counter- Consol. Stat. and with intent to sell or to otherwise transfer Federal or State used in this section, and disposition —
feiting §4119 for purposes of commercial advantage or certificate of the following words (1) Any items
private financial gain: registration shall and phrases shall bearing a
(1) manufactures; be prima facie have the meanings counterfeit
(2) sells; evidence of the facts given to them in mark, any
(3) offers for sale; stated therein. this subsection: property
(4) displays; constituting or
“Counterfeit mark.”
(5) advertises; derived from
A spurious mark
(6) distributes; or any proceeds
that meets all of the
(7) transports obtained,
following:
any items or services bearing or identified directly or
by a counterfeit mark shall be guilty of (1) Is applied to, used indirectly, as
the crime of trademark counterfeiting. or intended to be the result of an
(b) (Reserved). used in connection offense under
(c) Penalties— with an item this section
(1) Except as provided in paragraphs (2) and or service. and all per-
(3), a violation of this section constitutes (2) Is identical with or sonal property,
a misdemeanor of the first degree. substantially indis- including, but
tinguishable from not limited
(Continued)
212

Forfeiture/
Destruction/
(2) A violation of this section constitutes a a mark registered to, any items,
felony of the third degree if: and in use in this objects, tools,
(i) the defendant has previously been Commonwealth, machines,
convicted under this section; or any other state or equipment,
(ii) the violation involves more than 100 on the principal instrumentali-
but less than 1,000 items bearing a register in the ties or vehicles
counterfeit mark or the total retail United States Pat- of any kind,
value of all items or services bearing ent and Trademark used in con-
or identified by a counterfeit mark Office, whether nection with
is more than $2,000, but or not the person a violation of

less than $10,000. knew the mark this section
(3) A violation of this section constitutes a was registered. shall be seized
felony of the second degree if: (3) The application of by a law
(i) the defendant has been previously which is either: enforcement
convicted of two or more offenses (i) likely to cause officer.
under this section; confusion, to (2)(i) All seized
(ii) the violation involves the manufac- cause mistake personal
ture or production of items bearing or to deceive; or property ref-
counterfeit marks; or erenced in
paragraph

See also: § 4102 (iii) the violation involves 1,000 or more (ii) otherwise (1) shall be
Simulating items bearing a counterfeit mark intended to forfeited in
Objects of or the total retail value of all items be used on or accordance
Antiquity, § 4101(T) or services bearing or identified by in connection with the
Rarity, etc.; a counterfeit mark is more than with the item procedures
Forgery; $10,000. or service for set forth
Decep- (d) Quantity or retail value—The quantity or which the mark in section
tive or § 4107 retail value of items or services shall include is registered. 6501(d)
Fraudulent the aggregate quantity or retail value of all (relating to
“Item.” Any of the
Business items or services the defendant manufactures, scattering
following:
Practices sells, offers for sale, displays, advertises, rubbish).
(1) Goods.
distributes or transports. (ii) Upon the
(2) Labels.
(e) Fine—Any person convicted under this conclusion
(3) Patches.
section shall be fined in accordance with of all crimi-
(4) Fabric.
existing law or an amount up to three times nal and civil
(5) Stickers.
the retail value of the items or services forfeiture
(6) Wrappers.
bearing or identified by a counterfeit mark, proceedings,
(7) Badges.
whichever is greater. the court
(8) Emblems.
(h) Remedies cumulative—The remedies shall order
(9) Medallions.
provided for in this section shall be that for-
(10) Charms.
cumulative to the other civil and criminal feited items
(11) Boxes.
remedies provided by law. bearing or
(12) Containers.
consisting of
(13) Cans.
a counterfeit
(14) Cases.
mark be
(15) Hangtags.
destroyed or
(16) Documentation.
(Continued)
214

Forfeiture/
Destruction/
(17) Packaging. alternatively
(18) Any other com- disposed of
ponents of a type in another
or nature that are manner with
designed, marketed the written
or otherwise consent of
intended to be the trade-
used on or in con- mark owners
nection with any and the
goods or services. prosecuting

attorney
“Retail value.” One of
responsible
the following:
for the
(1) The counterfeiter’s
charges.
regular selling
(3)(i) If a person
price for the item
is convicted
or service bearing
of an offense
or identified by a
under this
counterfeit mark,
section, the
except that it shall
court shall
be the retail price

of the authentic order the

counterpart if the person to
item or service pay restitu-
bearing or identi- tion to the
fied by a counterfeit trademark
mark would appear owner and
to a reasonably to any other
prudent person victim of
to be authentic. the offense.
If no authentic (ii) In deter-
reasonably similar mining the
counterpart exists, value of the
the retail value property loss
shall be the coun- involving
terfeiter’s regular an offense
selling price. against the
(2) If the items bear- trademark
ing a counterfeit owner, a
mark are compo- court shall
nents of a finished grant resti-
product, the retail tution for
value shall be all amounts,
treated as if each including
component were expenses
a finished good incurred
and valued under by the trade-
paragraph (1). mark owner
(Continued)
216

Forfeiture/
Destruction/
in the inves-
tigation and
prosecution
of the
offense as
well as the
disgorge-
ment of
any profits
realized by
a person
convicted of
the offense.

Puerto Rico (12/16/2009)

Forfeiture/
Destruction/
Forgery of P.R. L. Ann. Any person who, with the intent to defraud, Secretary of State of § 223
Documents §4846 makes a false document, instrument or writing, Puerto Rico Registration
(Former in whole or in part, by means of which any right, or Federal Registration (e)
Mark—Any sign or
statutes obligation or interest is created, transferred, termi- medium that serves
regarding nated or otherwise affected, or who falsely alters, § 223k to distinguish in
falsification limits, suppresses or destroys, in whole or in part, a the market the
of trade- true right shall incur a fourth degree felony. The records of registered goods and services
marks (§ Any person who makes or knowingly has in marks, statements and of a person, as well
1311-1317) his possession any die, plate or any device, paper, documents filed therein, as the goods or
repealed on metal, machine or any other thing, which may and the mark registra- services of another
(6/18/04)) § 4853 be used in the forging of a seal, document, instru- tion certificates signed person. The term
ment or writing shall incur a fourth degree felony. and sealed as stated includes any trade-
Possession of Any person who alters information that identi- above shall be attesting mark or service
Instruments fies the author, title, edition number, or publisher, evidence in any suit in mark, certification
for Forging or who distorts, mutilates or alters the text of a which said marks are the mark and collec-
book or of a literary, scientific or musical work subject of a controversy. tive mark.
or record, a tape recording or electronic sound (f)
Trademark—Any
recording (audio), or of a theatrical work without word, name,
due authorization from the author or holder of the symbol, trade dress,
rights shall incur a fourth degree felony. medium,
(Continued)
218

Forfeiture/
Destruction/
Alteration logo, design, color,
of Informa- sound, scent, shape,
tion that object, or any com-
Identifies § 4854 bination thereof
Musical, that:
Scientific (1) Is used by a
or Literary natural or jurid-
Works ical person in
commerce, or
(2) any natural or
juridical person
has a bona
fide inten-
tion to use
in commerce
and applies
for registra-
tion thereof;
and serves to
identify and

distinguish his/
her goods from
those manufac-
tured or sold
by others and
to indicate the
source of said
goods even if
that source is
unknown.
(r)
Use in commerce—
The bona fide use
of a mark in trade
in Puerto Rico. For
purposes of this
chapter, a mark
shall be deemed
to be in use in
commerce:
(1) On goods,
when it is
placed in any
manner on the
goods or their
packaging or
containers or
(Continued)
220

Forfeiture/
Destruction/
the shelves or
displays associ-
ated therewith
or on the tags
or labels affixed
thereto, or
if the nature
of the goods
makes such
placement
impracticable,
then on docu-
ments associ-
ated with the
goods or their
sale, and the
goods are sold
or transported
in Puerto Rico,
and

(2)
on services
when it is used
or displayed
in the sale or
advertising of
services and
the services
are rendered in
Puerto Rico.
§ 4854
The court may also

impose restitution.
222
Rhode Island (1997)
Forfeiture/
Forgery, R.I. Gen. L. (b) Any person who knowingly and Any State or (a) As used in this (d)(1) Any personal property,
Counter- Ann. willfully forges or counterfeits any Federal Registration chapter, “forged” or including any item,
feiting, or §11-17-13 trademark, service mark, or identifica- or Protected by the “counterfeited trade- object, tool, machine,
Alter- tion mark, without the consent of the Federal Amateur mark,” “service mark,” device, or vehicle of
ation of owner of the trademark, service mark or Sports Act of 1978 or “identification any kind, employed as
Trade- identification mark, or who knowingly mark” means any mark an instrumentality in
mark, possesses any tool, machine device, or design that is: (1) the commission of, or
Service or other reproduction instrument or identical to, substan- in aiding or abetting
Mark, or material with the intent to reproduce tially indistinguishable in the commission of a
Identi- any forged or counterfeited trademark, from, or an imitation violation of this section,
fication service mark, or identification mark, of a trademark, service or proceeds derived
Mark shall be guilty of the offense of trademark, or identification directly from a violation
mark counterfeiting. mark, which is regis- of this section, is subject
(c)(1) Any person who knowingly and will- tered for those types of to seizure and forfeiture
fully sells, offer to sell, or possesses goods or services with and further proceedings
with the intent to sell goods that the secretary of state shall be had for their
contain a counterfeit trademark, pursuant to chapter 2 forfeiture as is prescribed
service mark, or identification mark of title 6 or registered by law in chapter 21 of
or sells or offers for sale a service in on the principal title 12; provided, that
conjunction with a service mark the register of the United no property used by any
States Patent person shall be forfeited

person knows is counterfeit, shall be and Trademark Office under the provisions
guilty of the offense of trafficking in or registered under of this section unless
trademark counterfeits. the laws of any other it shall appear that the
(2) If the goods or service to which the state or protected by owner of the property
forged or counterfeit trademarks, service the Federal Amateur had knowledge, actual or
marks, or identification marks are Sports Act of 1978, constructive, and was a
attached or affixed, or in connection Title 36 USC § 380, consenting party to the
with which they are used, or to which or if a registered or illegal act.
the offender intended they be attached unregistered use of (2) Property taken or
or affixed, or in connection with which the trademark or detained under this sec-
the offender intended they be used, design or data plate, tion shall not be replevi-
have, in the aggregate, a retail value serial number, or part able, but shall be deemed
of the goods if they were not forged or identification number; to be in the custody of
counterfeited of $5,000 or more, the and (2) which has not the law enforcement
person shall be guilty of a felony and been authorized by the agency making the seizure
upon conviction may be imprisoned up owner of it and is done and whenever property
to five years and fined up to $10,000. for pecuniary gain is forfeited under this
(3) If the goods or service to which the and with the intent to chapter it shall be utilized
forged or counterfeit trademarks, service defraud the holder of as follows:
marks, or registered designs are attached the trademark, (i) Where the seized
or affixed, or in connection with which service mark, or property is a vessel,
they are used, or to which the offender identification mark. vehicle, aircraft, or
intended they be attached or affixed, or other personal prop-
in connection with which the offender erty, it may be retained
intended they be used, have, in the and used by the law
aggregate, a retail value of the goods if enforcement
(Continued)
224
Rhode Island (1997)
Forfeiture/
they were not forged or counterfeited agency that seized that
of less than $5,000, the person shall be property where the use
guilty of a misdemeanor and may be of the property is rea-
imprisoned up to one year and fined up sonably related to the
to $1,000. law enforcement duties
(4) Any person who knowingly: (i) uses an of the seizing agency. If
object, tool, machine, or other device the seized property is a
to produce or reproduce a counterfeit motor vehicle, which
mark, or (ii) has possession, custody, or is inappropriate for use
control of any object, tool, machine, by the law enforce-

or device with intent to produce or ment agency due to
reproduce a counterfeit mark, is guilty style, size or color, the
of a felony and may be imprisoned up to seizing agency shall be
five years and fined up to $5,000. allowed to apply the
(5) The possession, custody, or control of proceeds of sale or the
more than 25 items having a counterfeit trade-in value of the
mark used on or in connection with them vehicle for activities
creates a presumption that the person reasonably related
having possession, custody, or control of to law enforcement
the items intended to sell those items. duties.

(6) If a person who violates this section pre- (ii) Eighty percent (80%)
viously has been convicted of violating of the proceeds shall
this section, the person shall be guilty be divided among the
of a felony and may be imprisoned up to state and local law
five years and fined up to $5,000. enforcement agencies
proportionately based
upon their contribution
to the investigation of
the criminal activity
related to the asset
being forfeited; the
balance shall go to
the department of
attorney general for
purposes related to law
enforcement.
(3) At the conclusion of any
criminal matter brought
under this chapter
any property seized
pursuant to this chapter
containing a counterfeit
copyrighted or registered
design shall be destroyed
unless the owner of
(Continued)
226
Rhode Island (1997)
Forfeiture/
the trademark, service
mark, or identification
mark gives prior written
consent to the use or sale
of the property and the
or identification mark is
obliterated or removed
from the property prior to
the disposition of it.

South Carolina (10/13/94, amended 6/12/06)

Forfeiture/
Destruction/
Sale of S.C. Code (B)(1) It is unlawful for a person know- Federal or State (A) For purposes of this section: (D) Personal property,
Goods or Ann. 1976 ingly and willfully to transport, Registration (1) “Counterfeit mark” means a including any
Services §39-15-1190 transfer, distribute, sell, or mark that is: item, object,
with otherwise dispose of, or to possess (a) identical to, or substan- tool, machine,
Counter- with intent to transfer, transport, tially indistinguishable or device of any
feit Mark; distribute, sell, or otherwise from, a registered mark or kind, employed as
Production dispose of, an item having a unregistered mark; an instrumentality
or Repro- counterfeit mark on it or in (b) used in connection with in the commission
duction of connection with it. the sale or offering for of or in aiding
Counterfeit (a) A person who knowingly and sale of goods or services or abetting in
Mark; willfully violates this subsec- that are identical to, or the commission
Penalties tion with respect to goods or substantially indistin- of a violation of
services having a retail sales guishable from, the goods subsection (B) or
value of less than $50,000 is or services with which (C), is considered
guilty of the offense of distri- the registered or unregis- contraband and is
bution of counterfeit marks tered mark is identified; subject to seizure
and, upon conviction, must be (c) likely to cause confusion, and forfeiture in
punished as follows: mistake, or deception if the same manner
used; and as other property
used in the
(Continued)
228

Forfeiture/
Destruction/
(i) if the goods or services (d) not authorized by the commission of
have a retail sales value of owner of the registered or specified criminal
$2,000 or less, the person unregistered mark. offenses as pro-
is guilty of a misdemeanor (2) “Registered mark” means a vided by law.
and must be fined not mark that is registered on the
more than $1,000 or principal register of the United
imprisoned not more than States Patent and Trademark
one year, or both; Office or with the South Caro-
(ii) if the goods or services lina Secretary of State.
have a retail sales value of (3) “Retail sales value” means the

more than $2,000 but less value computed by multiplying
than $10,000, the person is the number of items having a
guilty of a felony and must counterfeit mark used on them
be fined not more than or in connection with them by
$10,000 or imprisoned the retail price at which a sim-
not more than three years, ilar item having a mark used
or both; on it or in connection with it,
the use of which is authorized
by the owner, is offered for sale
to the public.

(iii) if the goods or services (4) “Unregistered mark” means

have a retail sales value of a symbol, sign, emblem,
$10,000 or more, but less insignia, trademark, trade
than $50,000, the person name, or word protected by
is guilty of a felony and the federal Amateur Sports
must be fined not more Act of 1978, Title 36 U.S.C.
than $20,000 or impris- Section 380.
oned not more than five
years, or both;
(iv) for a second or subsequent
conviction of the offenses
described in subitem (a),
without regard to the retail
sales value of the goods
or services, the person
is guilty of a felony and
must be fined not less
than $1,000 or more than
$50,000 or imprisoned
not more than 10 years,
or both.
(Continued)
230

Forfeiture/
Destruction/
See also: § 39-15-1195 (b) A person who knowingly and
Property willfully violates the provi-
Which May sions of this subsection with
be Seized respect to goods or services
having a retail sales value of
Forgery § 16-13-10 $50,000 or more is guilty of
the offense of trafficking in
counterfeit marks. A person
who knowingly and willfully
commits the offense of

trafficking as described in this
subitem is guilty of a felony
and, upon conviction, must
be punished as follows:
(i) for a first offense, fined
not less than $10,000 or
more than $25,000 or
imprisoned not more than
five years, or both;

(ii) for a second or subsequent

offense, fined not less than
$20,000 or more than
$50,000 or imprisoned
not more than 10 years,
or both.
(2) The possession, custody, or control
of more than 25 items having a
counterfeit mark used on them or
in connection with them is prima
facie evidence of a violation
of this section.
(C) A person who knowingly and willfully
uses any object, tool, machine, or
other device to produce or reproduce
a counterfeit mark or knowingly and
willfully has possession, custody, or
control of any object, tool, machine,
or device with intent to produce
or reproduce a counterfeit mark is
guilty of producing or reproducing
counterfeitmarks and, upon
conviction, must be punished as
provided in subsection (B).
(Continued)
232

Forfeiture/
Destruction/
(E) For purposes of enforcing this
section, investigators in the office of
the Secretary of State have statewide
jurisdiction. These investigators may
conduct investigations independently
or may assist local law enforcement
agencies in their investigations and
may initiate and carry out, in coor-
dination with local law enforcement
agencies, investigations of violations

of this section.
(F) The Secretary of State may refer
available evidence concerning
violations of this section to the
appropriate solicitor who may, with
or without the reference, institute the
appropriate criminal proceedings.

(G) The Secretary of State also may

refer available evidence concerning
violations of this section to the
Department of Revenue for purposes
of determining the obligations
of the violators of this section
pursuant to state income and other
taxation laws.
(H) The provisions of this section do not
apply to persons who own, rent, or
manage premises occupied by retail-
ers unless that person had actual
knowledge or actively participated in
a violation of this section.
234
South Dakota (1877, amended 1977)

Forfeiture/
Destruction/
Forgery or S.D. Codif. Every person who intentionally forges or § 37-6-1
Counter- L. counterfeits any trademark usually fixed by
feiting of §37-6-2 any person to any goods of such person with The following definitions apply to §§
Trademark intent to pass off any goods to which such 37-6-2 and 37-6-3:
as Misde- forged or counterfeited trademark is affixed (1) “Affixing” within the meaning of
meanor – as to the goods of such person; or who, with such sections is complete, whether
Fraudulent intent to defraud keeps any dies, plate, or such mark is affixed to the goods
Use – Sale brand, or imitation of the trademark of any themselves, or to any box, bale,
of Goods person for the purpose of counterfeiting barrel, bottle, case, cask, wrapper, or
under the same or selling such trademark when other package, or vessel, or any cover
Counterfeit counterfeited, or affixing the same to any or stopper thereof, in which such
Mark goods and selling the same as genuine goods of goods are put up;
the person entitled to the trademark; or who (2) “Goods” includes every kind of goods,
fraudulently uses the genuine trademark of wares, merchandise, compound, or
another with intent to sell or offer for sale or preparation, which may be lawfully
disposal, any goods as genuine, which are not kept or offered for sale;
the original and genuine goods of the person (3) “Trademark” includes every description
to whom the trademark properly belongs; or of word, letter, device, emblem, stamp,
who sells or keeps for sale any goods upon imprint, brand, printed ticket, label,
which any counterfeit trademark has been or wrapper, usually affixed by any
mechanic, manufacturer, druggist,

Making or S.D. Codif. affixed, intended to represent such goods as merchant, or tradesman to
Possessing L. the genuine goods of another, knowing the denote any goods to be goods
Forgery or §22-40-15 trademark to be counterfeited, is guilty of a imported, manufactured, produced,
Coun- (formerly Class 1 misdemeanor. compounded, or sold by him, other
terfeiting cited as § than any name, word, or expression
Any person who:
Devices – 22-39-37) generally denoting any goods to be of
(1) Makes or possesses, with knowledge
Felony some particular class or description.
of its character, any plate, die, or
other device, apparatus, equipment, or
article specifically designated for use in
See also: § 22-39-36
counterfeiting, unlawfully simulating, or
Forgery
otherwise forging, written instruments;
(2) Makes or possesses any device, appara-
tus, equipment, or article capable of or
adaptable to a use specified in subdivi-
sion (1) of this section, with intent to
use it or to aid or permit another to use
it, for the purpose of forgery; or
(3) Possesses a genuine plate, die, or other
device used in the production of written
instruments, with intent to defraud; is
guilty of a Class 6 felony.
236
Tennessee (1989, amended 7/1/00, amended 7/1/05)

Forfeiture/
Destruction/
Counterfeit Tenn. Code (b)(1) It is an offense for a person to (a) As used in this section: (f) All personal property,
Marks; Ann. knowingly manufacture any item or (1) “Counterfeit mark” including, but not
Definitions; §39-14-152 services bearing or identified by a means: limited to, any items
Violations; counterfeit mark. (A) Any knowingly unau- bearing a counter-
Punishment; (2) It is an offense for a person to use, thorized reproduction feit mark, or any
Remedies display, advertise, distribute, offer or copy of intellectual items, objects, tools,
for sale, sell, or possess with the property; or machines, equipment,
intent to sell or distribute any item (B) Intellectual property instrumentalities or
or service knowing the item or affixed to any item vehicles of any kind,
service bears or is identified by a knowingly sold, employed or used in

counterfeit mark. offered for sale, connection with a
(c) In determining whether a person who manufactured, violation of this sec-
possesses an item bearing or identified or distributed, or tion shall be subject
by a counterfeit mark possesses the item identifying services to judicial forfeiture
with the intent to sell or distribute it in offered or rendered, pursuant to chapter
violation of subdivision (b)(2), the trier without the authority 11, part 7 of this title.
of fact may infer from the possession, of the owner of the If the intellectual
custody or control of more than 25 intellectual property; property owner does
items bearing a counterfeit mark that not request release of
the person possesses the items with the seized items bearing
intent to sell or distribute them.

(d)(1) A violation of subdivision (b)(1) (2) “Intellectual property” a counterfeit mark,

shall be punished the same as is means any trademark, those items shall be
provided in § 39-14-115 for the service mark, trade name, destroyed unless the
offense of criminal simulation. In label, term, device, design intellectual property
addition to that punishment, a or word adopted or used owner consents to
person who violates subdivision (b) by a person to identify another disposition.
(1) shall be fined an amount up to that person’s goods or
three times the retail value of the services, and all rights
items bearing, or services identified protected by title 47,
by, a counterfeit mark, or the chapter 25, part 11; and
amount authorized in § 40-35-111 (3) “Retail value” means the
for the appropriate class of felony, counterfeiter’s regular
whichever amount is greater. selling price for the item
(2) A violation of subdivision (b) or service bearing or
(2) shall be punished as theft and identified by the counter-
graded in accordance with § 39-14- feit mark. In the case of
105; provided, all violations of items bearing a coun-
subdivision (b)(2) shall be punished terfeit mark, which are
by fine only, except with respect to components of a finished
violations involving distribution, product, the retail value
selling, offering for sale, or possess- shall be the counterfeiter’s
ing with the intent to sell, in which regular selling price of the
case all methods and manner of finished product on or in
punishment in § 39-14-105 which the component
shall apply. would be utilized.
(Continued)
238
Tennessee (1989, amended 7/1/00, amended 7/1/05)

Forfeiture/
Destruction/
See also: § 39-14-115 (e) For purposes of determining the
Criminal appropriate offense grade for a
Simulation defendant violating subdivision (b)
(2), the quantity or retail value of all
Forgery items bearing, or services identified by,
§ 39-14-114 every counterfeit mark the defendant
used, displayed, advertised, distributed,
offered for sale, sold or possessed with
the intent to sell or distribute at the
time of the offense shall be aggregated.

(g) Nothing in this section shall be
construed as prohibiting an owner
of intellectual property from seeking
relief under any other provision of law,
including the provisions of title 47,
chapter 18, part 1, title 47, chapter 25,
part 5, or title 47, chapter 25, part 11;
provided, a defendant prosecuted under
this section may not also be prosecuted
for criminal simulation under § 39-14-
115 based upon the same conduct.

Texas (9/1/97, amended 6/17/11, effective 9/1/12)

Forfeiture/
Destruction/
Trademark Vernon’s (b) A person commits an offense if the (c) A state or fed- (a) In this section:
Counterfeit- Tex. Stat. person intentionally manufactures, eral certificate (1) “Counterfeit mark” means a
ing and Codes displays, advertises, distributes, offers of registration mark that is identical to or
Ann. for sale, sells, or possesses with intent of intellectual substantially indistinguishable
§32.23 to sell or distribute a counterfeit mark property is from a protected mark the use
or an item or service that: prima facie or production of which is not
(1) bears or is identified by a counter- evidence of the authorized by the owner of
feit mark; or facts stated in the protected mark.
(2) the person knows or should have the certificate. (2) “Identification mark” means
known bears or is identified by a a data plate, serial
counterfeit mark. number, or part
(d) For the purposes of subsection (e), identification number.
when items or services are the subject (Text of subsec. (a)(3)
of counterfeiting in violation of this effective until Sept. 1, 2012)
section pursuant to one scheme or (3) “Protected mark” means a
continuing course of conduct, the con- trademark or service mark
duct may be considered as one offense or an identification mark
and the retail value of the items or that is:
services aggregated in determining the (A) registered with the
grade of offense. secretary of state;
(Continued)
240

Forfeiture/
Destruction/
(e) An offense under this section is a: (B) registered on the
(1) Class C misdemeanor if the retail principal register of the
value of the item or service is less United States Patent
than $20; and Trademark Office;
(2) Class B misdemeanor if the retail (C) registered under the
value of the item or service is $20 laws of another state; or
or more but less than $500; (D) protected by Section
(3) Class A misdemeanor if the retail 16.30, Business &
value of the item or service is $500 Commerce Code, or by
or more but less than $1,500; 36 U.S.C. Section 371

(4) state jail felony if the retail value et seq.
of the item or service is $1,500 or (Text of subsec.
more but less than $20,000; (a)(3) effective Sept.
(5) felony of the third degree if the 1, 2012)
retail value of the item or service (3) “Protected mark” means a
is $20,000 or more but less than trademark or service mark
$100,000; or an identification mark
(6) felony of the second degree if the that is:
retail value of the item or service (A) registered with the
is $100,000 or more but less than secretary of state;
$200,000; or

See also: § 32.22 (7) felony of the first degree if the (B)

registered on the
Criminal retail value of the item or service is principal register of the
Simulation; § 32.21(T) $200,000 or more. United States Patent
Forgery and Trademark Office;
(C)
registered under the
laws of another state; or
(D)
protected by Section
16.105, Business &
Commerce Code, or by
36 U.S.C. Section 371
et seq.
(4) “Retail value” means the
actor’s regular selling price
for a counterfeit mark or an
item or service that bears or is
identified by a counterfeit mark,
except that if an item bearing a
counterfeit mark is a component
of a finished product, the retail
value means the actor’s regular
selling price of the finished
product on or in which the
component is used, distributed,
or sold.
(Text of subsec. (a)(5)
effective until Sept. 1, 2012)
(Continued)
242

Forfeiture/
Destruction/
(5) “Service mark” has the
meaning assigned by Section
16.01, Business & Com-
merce Code.
effective Sept. 1, 2012)
(5) “Service mark” has the
meaning assigned by
Section 16.001, Business &
Commerce Code.
effective until Sept. 1, 2012)
(6) “Trademark” has the
meaning assigned by
Section 16.01, Business &
Commerce Code.
effective Sept. 1, 2012)
(6) “Trademark” has the meaning
assigned by Section 16.001,
Business & Commerce Code.

UTAH (1984)
Forfeiture/
Destruction/
Selling Utah Code Every person who sells or keeps for sale any § 70-3a-104 § 76-10-1001
Goods Ann. goods upon or to which any counterfeited
Under §76-10-1003 trademark, trade name, or trade device has This chapter does For the purpose of this part:
Coun- been affixed, after it has been filed with the not adversely affect (1) “Forged trademark,” “forged
terfeited Division of Corporations and Commercial the rights or the trade name,” “forged trade
Trademark, Code, intending to represent the goods as enforcement of rights device,” and “counterfeited
Trade Name the genuine goods of another, knowing it in marks acquired in trademark,” “counterfeited trade
or Trade to be counterfeited, is guilty of a Class B good faith at any time name,” “counterfeited trade
Device misdemeanor. at common law. device,” or their equivalents, as
§ 76-10- Every person who adopts or in any way uses used in this part, include every
1007 the registered trademark of another without § 70-3a-102 alteration or imitation of any
the consent of the owner thereof, is guilty of a trademark, trade name, or trade
Use of Class B misdemeanor. (1) This chapter shall device so resembling the origi-
Registered § 76-10- Every person who willfully forges or counter- be interpreted to nal as to be likely to deceive.
Trademark 1002 feits, or procures to be forged or counterfeited, provide for the (2) “Trademark” or “trade name”
Without any trademark, trade name, or trade device, registration and or “trade device,” as used in this
Consent usually affixed by any person, or by any asso- protection of part, includes every trademark
ciation or union of workingmen, to his or its trademarks and registrable with the Division
goods, which has been filed with the Division service marks of Corporations and
of Corporations and Commercial Code, in a manner Commercial Code.
(Continued)
244
UTAH (1984)
Forfeiture/
Destruction/
Forging or § 76-6-518 with intent to pass off any goods to which substantially
Coun- the forged or counterfeited trademark, trade consistent with
terfeiting name, or trade device is affixed, or intended the federal system
Trademark, to be affixed, as the goods of the person or of trademark
Trade Name association or union of workingmen, is guilty registration and
or Trade of a Class B misdemeanor. protection under
Device the Trademark
Act of 1946, 15
See also: U.S.C. Sec. 1051,
Criminal § 76-6- et seq.

Simulation; 501(T)
Forgery and
Producing
False Identi-
fication

Vermont (1957)
Forfeiture/
Destruction/
Violations 9 Vt. Stat. Ann. (1) Falsely make, counterfeit, imitate, § 2521
§2530 sell, offer for sale, or in any way utter
or circulate any trademark, which has The term “trademark” as used
been registered in accordance with the herein includes any word, name,
provisions of this subchapter; symbol or device or any combina-
(2) Affix to any article of merchandise tion thereof adopted and used (1)
a false or counterfeit or imitation by a manufacturer or merchant to
trademark, or the genuine trademark identify his goods and distinguish
of another, which has been registered them from those manufactured or
in accordance with the provisions of sold by others, or (2) by another
this subchapter, without the person on goods produced by
latter’s consent; his labor.
(3) Sell, keep, or offer for sale an article
of merchandise, to which is affixed a
false or counterfeit trademark, or the
genuine trademark, or an imitation of
the trademark of another, which has
been registered in accordance with the
provisions of this subchapter, without
the latter’s consent;
(Continued)
246
Vermont (1957)
Forfeiture/
Destruction/
Penalties § 2531 (4) Have in his possession a counterfeit
trademark or a die, plate, brand or
other thing for the purpose of falsely
See also: Title 13, § 1802 making or counterfeiting a trade-
Uttering Forged mark, which has been registered in
or Counterfeit accordance with the provisions of this
Instrument subchapter; or
(5) Make or sell, or offer to sell or dispose
of, or have in his possession with
intent to sell or dispose of, an article of

merchandise with a trademark, which
has been registered in accordance
with the provisions of this subchapter
by another, which indicates falsely
the quantity, character, place of
manufacture or production, or person
manufacturing, producing,
or sponsoring the article.

Subject to the provisions of section 2532

of this title, any person who violates any
of the provisions of section 2530 of this
title shall be fined not more than $500 or
imprisoned for not more than one year, or
both and shall be liable to pay all damages
sustained in consequence of such violation
of section 2530, to be recovered by or on
behalf of the party injured thereby, in a
civil action on this statute.
248
Virgina (amended 2008, amended 4/6/11, effective 7/1/11)

Forfeiture/
Destruction/
Infringement Va. Code Subject to the provisions of § 59.1- § 59.1-92.13 § 59.1-92.2 § 59.1-92.13
Ann. 92.15, any person who (i) uses in a
§59.1-92.12 manner likely to cause a consumer D. In any proceeding “Mark” means any trademark The court shall also order
confusion, mistake, or deception as under this chapter, or service mark registered in that any material that
to the source or origin of any goods any certificate of the Commonwealth or the violates § 59.1-92.12
or services, without the consent of registration issued by United States Patent and that is in the possession
the owner of a registered mark, any the Commonwealth Trademark Office, or entitled or under the control of
reproduction, counterfeit, copy, or or the United States to registration under this any defendant in such
colorable imitation of a registered Patent and Trademark chapter, whether registered case be destroyed or
mark in connection with the sale, Office shall be prima or not. delivered to an officer
offering for sale, distribution, or facie evidence of the “Service mark” means any of the court or to the
advertising of such goods or services facts stated therein. word, name, symbol, or device owner for destruction,
or (ii) reproduces, counterfeits, copies, or any combination thereof or alternatively disposed
or colorably imitates a registered used by a person to identify of in another manner
mark and applies such reproduction, and distinguish the services of with the written consent
counterfeit, copy, or colorable such person from the services of the owner of the
imitation to labels, signs, prints, of others. registered mark.
packages, wrappers, receptacles,
advertisements, or any item intended
to be used in a manner likely to cause

a consumer confusion, mistake, “Trademark” means any C. Property subject to

or deception as to the source or word, name, symbol, or device lawful seizure by
origin of any goods or services in or any combination thereof any officer charged
connection with the sale, offering used by a person to identify with enforcing this
for sale, distribution, or advertising and distinguish the goods of chapter shall include
of such goods or services shall be such person from those manu- any article bearing
liable in a civil action by the owner factured or sold by others. or consisting of a
of a registered mark for any and “Use” means the bona fide counterfeit mark used
all of the remedies provided in § use of a mark in the ordinary in violation of this
59.1-92.13, except that under this course of trade, and not made chapter, any property
subdivision the owner shall not be merely to reserve a right in used in the substan-
entitled to recover profits, damages, a mark. For the purposes of tial connection with
or attorney fees unless the acts have this chapter, a mark shall be or intended for use in
been committed with knowledge deemed to be in use the course of a viola-
that such mark is intended to be tion of this chapter,
used to cause confusion or mistake or any interest or
or to deceive. profits substantially
connected to a viola-
tion of this chapter.
(Continued)
250
Virgina (amended 2008, amended 4/6/11, effective 7/1/11)

Forfeiture/
Destruction/
Remedies and § 59.1-92.13 A. Any owner of a registered mark (i) on goods when it is Forfeiture, seizure,
Penalties in force and effect may proceed placed in any manner and disposition of
by suit in a court of competent on the goods or their such property shall be
jurisdiction to enjoin violations containers or the displays in accordance with
of § 59.1-92.12, seek such associated therewith or on Chapter 22.1 (§19.2-
other remedies as are set forth the tags or labels affixed 386.1 et seq.) of
herein, or both. Any court of thereto, or if the nature Title 19.2.
competent jurisdiction may of the goods makes such E. In any criminal pro-
grant such injunctions as may placement impractica- ceeding under subsec-
by the court be deemed just ble, then on documents tion B, upon motion
and reasonable to restrain such associated with the goods of the Commonwealth
violations, and may require any or their sale, and the the court shall order
defendant to pay to such owner goods are possessed in the any material that vio-
all profits derived from and/or Commonwealth or sold lates § 59.1-92.12 that
all damages suffered by reason of or otherwise distributed is in the possession
such violations. The court, in its in commerce in the or under the control
discretion upon consideration Commonwealth, and of any defendant or
of the circumstances of the case, (ii) in connection with law-enforcement
may award reasonable attorney services when it is used or officer be destroyed or
fees to the prevailing party. displayed in the course delivered to an

B. Any person who: of selling or providing officer of the court

1. Knowingly and intentionally services in the or to the owner of
violates the provisions of Commonwealth, or the registered mark
§ 59.1-92.12 is guilty of a advertising descriptive of for destruction, or
Class 1 misdemeanor and, services available within alternatively disposed
upon a second or subsequent the Commonwealth of in another manner
conviction, is guilty of a that is communicated with the written
Class 6 felony. within or into the consent of the owner
2. Knowingly and intentionally Commonwealth. of the registered mark.
violates the provisions of §
59.1-92.12 and possesses 100
or more identical counterfeit
registered marks or possesses
counterfeit items valued at
$200 or more, is guilty of a
Class 6 felony.
252
Washington (1999)
Forfeiture/
Destruction/
Counterfeit Wash. Rev. Any person who willfully and Any state or § 9.16.005 § 9.16.041
Mark— Code Ann. knowingly, and for financial gain, federal certificate
Intellectual §9.16.030 manufactures, uses, displays, of registration of The definitions in this section apply (1) Any items bearing
Property advertises, distributes, offers for sale, any intellectual throughout this chapter unless the a counterfeit mark,
sells or possesses with intent to sell property is prima context clearly requires otherwise. and all personal
or distribute any item, or offers any facie evidence of property employed
services, bearing or identified by a the facts stated in (1) “Counterfeit mark” means: or used in connec-
counterfeit mark, is guilty of the crime the certificate. (a) Any unauthorized reproduction with counter-
of counterfeiting. tion or copy of intellectual feiting, including
Imitating § 9.16.020 Every person who, in any county, property; or but not limited to,
Lawful Brand places upon any property, any brand (b) Intellectual property affixed any items, objects,
or mark in the likeness or similitude of to any item knowingly sold, tools, machines,
another brand or mark filed with the offered for sale, manufactured, equipment, instru-
county auditor of such county by the or distributed, or identifying ments, or vehicles
owner thereof as a brand or mark for services offered or rendered, of any kind, shall
the designation or identification of a without the authority of be seized by any law
like kind of property, is: the owner of the enforcement officer.
intellectual property.

(1) If done with intent to confuse or (2) “Intellectual property” means any All seized personal
commingle such property with, or trademark, service mark, trade property referenced
to appropriate to his or her own name, label, term, device, design, in this subsection
use, the property of such other or work adopted or used by a per- shall be forfeited
owner, guilty of a felony, punish- son to identify such person’s goods in accordance with
able by imprisonment in a state or services. Intellectual property RCW 10.105.010.
correctional facility for not more does not have exclusive use rights (2) Upon request of
than five years, or by imprisonment to trade names registered under the intellectual
in the county jail for up to 364 chapter 19.80 RCW. property owner, all
days, or by a fine of not more than (3) “Retail value” means the coun- seized items bearing
1,000 dollars, or by both fine and terfeiter’s regular selling price a counterfeit mark
imprisonment; or for the item or service bearing shall be released
(2) If done without such intent, guilty or identified by the counterfeit to the intellectual
of a misdemeanor. mark. In the case of items bearing property owner
a counterfeit mark, which are for destruction or
(1) Counterfeiting is a misdemeanor,
components of a finished product, disposition.
except as provided in subsections
the retail value shall be the (3) If the intellectual
(2), (3), and (4) of this section.
counterfeiter’s regular selling price property owner does
(2) Counterfeiting is a gross misde-
of the finished product on or in not request release of
meanor if:
which the component would seized items bearing
(a) The defendant has previously
be utilized. a counterfeit mark,
been convicted under RCW
such items shall be
9.16.030; or
destroyed unless the
intellectual property
owner consents to
(Continued)
254
Washington (1999)
Forfeiture/
Destruction/
Counter- § 9.16.035 (b) The violation involves more Any State or § 9.16.070
feiting - than 100 but fewer than 1,000 Federal Registra-
Penalties items bearing a counterfeit tion is prima facie A plate, label, trademark,
mark or the total retail value of evidence of the term, design, device or form of
all items bearing a counterfeit facts stated herein. advertisement is in the form and
mark or the total retail value similitude of the genuine instrument
of all items bearing, or services imitated if the finished parts of the
identified by, a counterfeit engraving thereupon shall resemble
mark is more than $1,000 but or conform to the similar parts of the
less than $10,000. genuine instrument.

(3) Counterfeiting is a Class C felony if:
(a) The defendant has been previ- § 9.16.050
ously convicted of two or more
offenses under RCW 9.16.030; A label, trademark, term, design,
(b) The violation involves the device or form of advertisement
manufacture or production shall be deemed to be affixed to any
of items bearing counterfeit goods, wares, merchandise, mixture,
marks; or preparation, or compound whenever
it is in any manner placed in or upon
either the article itself, or the box,
bale, barrel, bottle, case,

Counterfeit- § 9.16.035 (c) The violation involves 1,000 cask or other vessel or package, or the
ing—Pen- or more items bearing a coun- cover, wrapper, stopper, brand, label,
alties terfeit mark or the total retail or other thing in, by or with which the
value of all items bearing, goods are packed, enclosed, or other-
or services identified by, a wise prepared for sale or distribution.
See also: counterfeit mark is $10,000
Removing or more.
Lawful § 9.16.010 (4) Counterfeiting is a Class C felony if:
Brands; (a) The violation involves the
Forgery manufacture, production, or
§ 9A.60.020 distribution of items bearing
counterfeit marks; and
(b) The defendant knew or should
have known that the counter-
feit items, by their intended
use, endangered the health or
safety of others.
(5) For purposes of this section, the
quantity or retail value of items or
services shall include the aggregate
quantity or retail value of all items
bearing, or services identified by,
every counterfeit mark the defen-
dant manufactures, uses, displays,
advertises, distributes, possesses, or
possesses with intent to sell.
(Continued)
256
Washington (1999)
Forfeiture/
Destruction/
(6) A person guilty of counterfeiting
shall be fined an amount up to .
three times the retail value of the
items bearing, or services identified
by, a counterfeit mark, unless
extenuating circumstances are
shown by the defendant.
(7) The penalties provided for in this
section are cumulative and do not
affect any other civil and criminal

penalties provided by law.

West Virginia (1998)

Forfeiture/
Destruction/
Making plates, W. Va. Code If any person engrave, stamp, or cast, or otherwise make or
etc., for forgery; §61-4-4 mend any plate, block, press, or other things adapted and .
possession of designed for the forging and false-making of any writing
same; penalties or other thing, the forging or false-making whereof is
punishable by this article; or if such person have in his
possession any such plate, block, press, or other thing, with
intent to use, or cause or permit it to be used, in forging or
§ 61-4-5 false-making any such writing or other thing, he shall be
Forging or deemed guilty of a felony, and, upon conviction, shall be
Uttering Other confined in the penitentiary not less than two nor more
Writing; Pen- than 10 years.
alty; Creation (a) If any person forge any writing, other than such as is
of Unauthorized mentioned in the first and third sections of this article,
Demand Draft to the prejudice of another’s right, or utter or attempt
to employ as true such forged writing, knowing it to
be forged, he shall be guilty of a felony and, upon
conviction, shall be confined in the penitentiary
not less than one nor more than 10 years, or, in the
discretion of the court, be confined in jail not more
than one year and be fined not exceeding $500.
258
Wisconsin (1905, amended 1993, amended 2/1/03)

Forfeiture/
Destruction/
Duplication Wis. Stat. Ann. (1) It shall be unlawful for any State Registration § 132.001
or Reproduc- §132.02 person, firm, partnership,
tion corporation, association or union § 132.25 (1) “Counterfeit mark” means a
of workingmen, without the con- spurious mark that is identical to or
sent of the owner of any mark, to Nothing in this chapter substantially identical to a genuine
remove any such mark attached affects any right in a mark and that is used or intended
to merchandise or products of mark, which is acquired to be used on or in connection with
labor, for the purpose of using under common law. goods or services for which the gen-
such merchandise or products uine mark is registered and in use.
of labor as a pattern for the “Counterfeit mark” does not mean

duplicating or reproduction of any mark or designation used in
the same, either in the identical connection with goods or services
form or in such near resemblance if, at the time the goods or services
thereto as may be calculated were manufactured or produced,
to deceive. the holder of the right to use the
(3) It shall be unlawful for any other mark authorized the manufacturer
person to make use, with intent or producer to use the mark or
to deceive, of that mark or any designation for the type of goods or
counterfeit mark that is identical services manufactured or produced.
to or substantially identical to (1m) “Department” means the
that mark, or to utter or display department of financial institutions.

Penalty § 132.03 the same orally, or in any printed (2) “Mark” means a label, trademark,
or written form in the conduct of trade name, term, design, pattern,
his or her business or any business model, device, shopmark, drawing,
transaction without the express specification, designation or form
consent, license, and authority of advertisement that is adopted
of the person, firm, partnership, or used by any person to designate,
corporation, association, or union make known or distinguish any
Trafficking in § 132.20(2) so owning the same, and such goods or service as having been
Counterfeit unauthorized and unlawful use made, prepared or provided by
Marks may be prohibited and prevented that person and that is registered
by injunction or other proper by that person under s. 132.01.
proceeding in a court of compe-
tent jurisdiction without recourse
to the penal statute providing a
§ 943.38(3) punishment for such unlawful
See also: (a)-(c) use. In case such association
Forgery or union of workingmen is not
incorporated such actions may
be commenced and prosecuted
by an officer or member of such
association or union on behalf of
and for the use of such associa-
tion or union. This subsection
does not apply to the purchase of
merchandise in good faith from
a distributor or the retail sale of
that merchandise in good faith.
(Continued)
260
Wisconsin (1905, amended 1993, amended 2/1/03)

Forfeiture/
Destruction/
Every person who knowingly
and willfully violates s. 132.01 or
132.02, except those provisions
relative to emergency repairs,
shall be imprisoned for not more
than six months or fined not
more than $10,000 or both.
(2) Any person who, with intent
to deceive, traffics or attempts
to traffic in this state in a coun-

terfeit mark or in any goods or
service bearing or provided under
a counterfeit mark is guilty of a
Class H felony, except that, not-
withstanding the maximum fine
specified in s. 939.50(3)(h), if
the person is an individual he or
she may be fined not more than
$250,000 and if the person is not
an individual the person may be
fined not more than $1,000,000.

Wyoming (1982, amended 1983, amended 2/23/07, effective 7/1/07)

Forfeiture
Destruction/
Forgery; Wyo. Stat. (a) A person is guilty of forgery if, with intent to § 6-3-601
Penalties Ann. defraud, he: .
§6-3-602 (i) Alters any writing of another As used in this article
without authority; “writing” means printing
(ii) Makes, completes, executes, authenticates, or any other method of
issues, or transfers any writing so that it recording information,
purports to be the act of another who did not money, coins, tokens,
authorize that act, or to have been executed stamps, seals, credit cards,
at a time or place or in a numbered sequence badges, trademarks, and
See also: § 6-3-603 other than was in fact the case, or to be a other symbols of value, right,
Possession copy of an original when no such original privilege, or identification.
of Forged existed; or
Writings (iii) Utters any writing that he knows to be forged
and Forgery in a manner specified in paragraphs (i) or (ii)
Devices; of this subsection.
Penalties (b) Except as provided in subsection (c) of this
section, forgery is a felony punishable by impris-
onment for not more than 10 years, a fine of not
more than $10,000, or both.
Index
A. Bourjois & Co. v. Katzel, 397–398 Berne Convention, 340–341

Acquiescence, 291–292 Bit Torrent system, 364
Aggravated felony, 299
Alabama California
civil statutes civil statutes
dilution, 6 common law, 9
trademark registration, 5 dilution, 9
unfair competition, 6 trademark registration, 9
criminal statutes unfair business practices act, 9
counterfeit marks, 64 unfair competition, 9
simulation, 63 criminal statutes
trademarks/trade secrets, theft commission of a felony, 69–75
of, 62 counterfeit of registered mark, 68
use of trademarked containers taking/damaging/destruction of
for other articles, 65–66 property, 69–75
use of unauthorized copy of Civil statutes, U.S. State
computer software, 65 Alabama
Altered product unique identification, dilution, 6
403–404 trademark registration, 5
American Broadcasting Cos., Inc. v. unfair competition, 6
Aereo, Inc., 372–381 Arizona
Anti-Counterfeiting Trade Agreement common law, 7
(ACTA), 324–325 dilution, 6
Arizona trademark registration, 6
civil statutes unfair business practices act, 7
common law, 7 unfair competition, 7
dilution, 6 Arkansas
trademark registration, 6 common law, 8
unfair business practices act, 7 consumer fraud, 8
unfair competition, 7 dilution, 8
Arkansas trademark registration, 8
civil statutes unfair competition, 8
common law, 8 California
consumer fraud, 8 common law, 9
dilution, 8 dilution, 9
trademark registration, 8 trademark registration, 9
unfair competition, 8 unfair business practices act, 9
Arkansas unfair competition, 9
criminal statutes Colorado
criminal simulation, 67 common law, 10
410 Index
dilution, 10 Consumer Fraud and Deceptive

trademark registration, 10 Business Practices Act, 18
unfair business practices act, 10 dilution, 17
Connecticut unfair competition, 18
common law, 11 Uniform Deceptive Trade
dilution, 11 Practices Act, 18
trademark registration, 11 Indiana
unfair business practices act, 11 common law, 19
Delaware trademark registration, 18
dilution, 12 IOWA
District of Columbia trademark registration, 19
common law, 13 Unfair Business Practices Act, 19
dilution, 12 unfair competition, 19
trademark registration, 12 Kansas
unfair business practices act, 12 common law, 20
Florida trademark registration, 20
deceptive and unfair trade Kentucky
practices, 13 common law, 21
unfair competition, 13 Unfair Business Practices Act, 21
Georgia unfair competition, 21
dilution, 14 Louisiana
Hawaii trademark registration, 21
dilution, 15 Unfair Trade Practices &
trademark registration, 15 Consumer Protection Law, 22
unfair business practices act, 15 Maine
uniform deceptive trade practices Maine Unfair Trade Practices
act, 15 Act, 23
IDAHO trademark registration, 22
Consumer Protection Act, 17 Maryland
Illinois Unfair Business Practices Act, 23
Index 411
Massachusetts Nevada
common law, 24 common law, 33
dilution, 24 Deceptive Trade Practices Act, 33
Michigan unfair competition, 33
common law, 25 New Hampshire
Consumer Protection Act, 25 common law, 34
unfair competition, 25 Unfair Business Practices Act, 34
Minnesota New Jersey
dilution, 26 Consumer Fraud Act, 35
trademark registration, 25–26 trademark registration, 35
Unfair Business Practices Act & unfair competition, 35
Consumer Fraud, 26 New Mexico
unfair competition, 26 common law, 36
Uniform Deceptive Trade dilution, 36
Practices Act, 26 trademark registration, 36
Mississippi unfair competition, 36
common law, 27 New York
trademark registration, 27 Consumer Protection from
unfair competition, 27 Deceptive Acts and Practices
Unfair Trade Practices Act, 27 Act, 37
Missouri dilution, 37
common law, 28 trademark registration, 37
trademark registration, 28 North Carolina
Unfair Business Practices Act, 28 common law, 38
Montana trademark registration, 38
common law, 30 Unfair Business Practices Act, 38
dilution, 30 North Dakota
Montana Unfair Trade Practices common law, 39
and Consumer Protection dilution, 39
Act, 30 trademark registration, 38
trademark registration, 29 Unfair Business Practices Act, 39
unfair competition, 30 unfair competition, 39
Nebraska Ohio
Consumer Protection Act, 32 dilution, 39
dilution, 31 trademark registration, 39
trademark registration, 30–31 Unfair Business Practices Act, 39
Uniform Deceptive Trade Uniform Deceptive Trade
Practices Act, 32 Practices Act, 39
412 Index
Oklahoma Texas
Consumer Protection Act, 40 Deceptive Trade Practices—
Deceptive Trade Practices Act, 40 Consumer Protection Act,
dilution, 40 52
trademark registration, 40 dilution, 49–51
unfair competition, 40 enforcement, 49
Oregon forum for actions, 51
common law, 41 registration of mark, 48–49
dilution, 41 trademark registration general
trademark registration, 40 provisions, 46–47
Unlawful Trade Practices Act, 41 Utah
Pennsylvania common law, 55
common law, 42 Consumer Sales Practices Act, 55
trademark registration, 41 trademark registration, 53–54
Unfair Trade Practices and unfair competition, 55
Consumer Protection Law, 42 Unfair Practices Act, 55
Puerto Rico Vermont
Consumer Protection Act, 43 Consumer Fraud Act, 56
unfair competition, 43 Virginia
Rhode Island common law, 57
common law, 44 Consumer Protection Act, 57
Deceptive Trade Practices Act, 44 dilution, 57
dilution, 44 trademark registration, 56–57
trademark registration, 43 unfair competition, 57
unfair competition, 44 Washington
South Carolina common law, 58
common law, 45 Consumer Protection Act, 58
unfair competition, 45 Unfair Business Practices, 58
Unfair Trade Practices Act, 45 unfair competition, 58
South Dakota West Virginia
Deceptive Trade Practices and dilution, 59
Consumer Protection Act, 45 trademark registration, 59
trademark registration, 45 Wisconsin
Tennessee common law, 60
common law, 46 dilution, 60
dilution, 46 trademark registration, 59–60
trademark registration, 46 Unfair Business Practices Act, 60
Index 413
Wyoming scraping, 368–369

common law, 61 vicarious liability, 361–362
dilution, 61 registration, 336–338
trademark registration, 60 scope, 333–334
Unfair Business Practices Act, 61 technologies challenging the
unfair competition, 61 boundaries, 372–381
CloudFlare’s security system, 364 videogames, 369–372
Colorado virtual worlds, 369–372
civil statutes Counterfeit labels, trafficking in,
common law, 10 318–319
dilution, 10 Crime victim rights, 307–308
trademark registration, 10 Criminal conspiracy, 315
unfair business practices act, 10 Criminal procedure, 308–312
unfair competition, 10 Criminal statutes, U.S. State
criminal statutes Alabama
trademark counterfeiting, 76–78 counterfeit marks, 64
Community antenna television simulation, 63
(CATV) systems, 375–376 trademarks/trade secrets, theft
Connecticut of, 62
civil statutes use of trademarked containers
common law, 11 for other articles, 65–66
dilution, 11 use of unauthorized copy of
trademark registration, 11 computer software, 65
unfair business practices act, 11 Arkansas
unfair competition, 11 criminal simulation, 67
criminal statutes California
prohibited acts relative to commission of a felony, 69–75
stamps, labels, trademarks counterfeit of registered mark,
service marks, collective marks 68
and certification marks, 79–81 taking/damaging/destruction of
Contributory liability, 360–361 property, 69–75
Convicted trademark counterfeiters Colorado
immigration consequences for, 299 trademark counterfeiting, 76–78
Copyright Act, 334 Connecticut
fair use, 353–359 prohibited acts relative to
rights protected by, 338–340 stamps, labels, trademarks
Copyright piracy service marks, collective marks
first-sale doctrine, 346–353 and certification marks, 79–81
counterfeit items, 349 Delaware
grey market, 350–353 trademark counterfeiting, 82–84
music, 346–349 District of Columbia
software, 346–349 forging/imitating brands/packing
jurisdiction, 334–336 goods, 87
online piracy, 359–360 trademark counterfeiting, 85–86
contributory liability, 360–361 Florida
Digital Millennium Copyright offenses involving forging/
Act (DMCA), 365–368 counterfeiting private labels,
inducement, 362–364 88–95
414 Index
Georgia Massachusetts
forging or counterfeiting of, or items/services bearing/identified
use of forged or counterfeited by counterfeit mark, 133–135
trademarks/service marks / penalties, 133–135
copyrighted/registered designs, sales, 133–135
96–102 Michigan
Hawaii counterfeiting identifying mark,
sentencing of repeat offenders, 136–138
103–106 Minnesota
trademark counterfeiting, 103 counterfeited intellectual
Idaho property, 139–142
counterfeit mark, 108 penalties, 139–142
forging/counterfeiting Mississippi
trademarks, 107 forfeiture, 143
imitates of trademark/service forfeitures, 144–145, 146–149
mark, 108–109 implements to forge trademarks/
punishment for counterfeiting, labels, 144–145
107 penalties for offenses, 143
sale of counterfeit goods, 107 penalties for violations, 146–149
Illinois sale of goods bearing counterfeit
sentence, 112–116 trademark/label, 146–149
unauthorized use/display of trademarks and labels, 143
trademark/trade name/service Missouri
mark, 110–111 counterfeiting marks, 150–152
unauthorized use of name/seal of penalties, 150–152
trademark/service mark, 112 Montana
Indiana forfeiture, 153–162
application fraud, 117–118 penalties, 153–162
counterfeiting, 117–118 presumption, 153–162
forgery, 117–118 restitution, 153–162
Iowa trademark counterfeiting,
intellectual property 153–162
counterfeiting, 119–121 Trademark Counterfeiting
Kansas – Presumption – Penalties
counterfeiting, 122–123 – Restitution – Forfeiture 1,
Kentucky 153–162
counterfeiting intellectual Nebraska
property, 124–126 criminal simulation, 163
disposition of property, 124–126 penalty, 163
penalties, 124–126 Nevada
Louisiana counterfeiting trademark/design,
illegal use of counterfeit 164
trademark, 127–128 selling/displaying/advertising
Maine goods with false trademark,
criminal simulation, 129 164–167
Maryland New Hampshire
trademark counterfeiting, dealing in counterfeit goods,
130–132 168–175
Index 415
New Jersey sale of goods/services with

offenses, 176–179 counterfeit mark, 227–233
trademark counterfeiting, South Dakota
176–179 counterfeiting of trademark as
New Mexico misdemeanor, 234–235
forgery, 180–183 felony, 234–235
New York forgery, 234–235
trademark counterfeiting, fraudulent use, 234–235
184–189 making/possessing forgery/
North Carolina counterfeiting devices,
criminal use of counterfeit 234–235
trademark, 190–193 sale of goods under counterfeit
North Dakota mark, 234–235
counterfeiting, 194–195 Tennessee
forgery, 194–195 counterfeit marks, 236–237
Ohio forgery, 238
trademark counterfeiting, punishment, 236–237
196–202 violations, 236–237
Oklahoma Texas
Civil Actions, 203–206 trademark counterfeiting,
damages and attorney fees, 239–242
203–206 Utah
item bearing counterfeit mark, forging or counterfeiting
use of, 203–206 trademark/trade name/trade
penalties, 203–206 device, 244
seizure and forfeiture, 203–206 selling goods under counterfeited
Oregon trademark trade name/trade
counterfeiting of trademark, device, 243
207–210 use of registered trademark
Pennsylvania without consent, 243
trademark counterfeiting, Vermont
211–216 penalties, 246–247
Puerto Rico violations, 245
alteration of information that Virgina
identifies musical/scientific/ infringement, 248–249
literary works, 218–221 remedies and penalties, 250–251
document forgery, 217 Washington
possession of instruments for counterfeiting, 254
forging, 217 counterfeit mark, 252
Rhode Island imitating lawful brand, 252–253
alteration of trademark/service intellectual property, 252
mark/identification mark, penalties, 254–256
222–226 West Virginia
counterfeiting, 222–226 creation of unauthorized demand
forgery, 222–226 draft, 257
South Carolina forgery, 257
penalties, 227–233 forging/uttering other writing,
production/reproduction of 257
counterfeit mark, 227–233 penalty, 257
416 Index
Wisconsin, 260 Florida

duplication/reproduction, 258 civil statutes
penalty, 259 common law, 13
trafficking in counterfeit marks, deceptive and unfair trade
259 practices, 13
Wyoming dilution, 13
forgery, 261 trademark registration, 13
penalties, 261 unfair competition, 13
Customs duties, 319–321 criminal statutes
Cyber threat intelligence, 331 offenses involving forging/
counterfeiting private labels,
Delaware 88–95
civil statutes Foreign Counterfeit Merchandise
common law, 12 Prevention Act, 321
dilution, 12 Foreign infringing sites, 326–327
trademark registration, 11 Freedom of Information Act (FOIA),
unfair competition, 12 321
criminal statutes
trademark counterfeiting, 82–84 General Provisions, 383
Digital Millennium Copyright Act Georgia
(DMCA), 334, 365–368 civil statutes
District of Columbia dilution, 14
civil statutes trademark registration, 14
dilution, 12 criminal statutes
trademark registration, 12 forging or counterfeiting of, or
unfair business practices act, 12 use of forged or counterfeited
unfair competition, 13 trademarks/service marks/
criminal statutes copyrighted/registered designs,
forging/imitating brands/packing 96–102
goods, 87 Grey market, 350–353
trademark counterfeiting, 85–86 versus counterfeit goods, 384
with foreign language labels and
Evidence issues, 308–312 manuals, 405–406
Fair use defense, 353–355 Hawaii

de minimis use, 358–359 civil statutes
and internet, 355–358 common law, 15
Federal law enforcement policies, dilution, 15
Federal Trademark Dilution Act, unfair business practices act, 15
388–389 unfair competition, 15
First-sale doctrine uniform deceptive trade practices
copyright piracy, 346–353 act, 15
counterfeit items, 349 criminal statutes
grey market, 350–353 sentencing of repeat offenders,
music, 346–349 103–106
software, 346–349 trademark counterfeiting, 103
Index 417
Idaho prima facie case, elements of,

civil statutes 342–346
common law, 17 Intellectual Property Protection and
Consumer Protection Act, 17 Courts Amendments A, 349
dilution, 16 International Trade Commission
trademark registration, 16 (ITC), 392–393
unfair competition, 17 Internet service provider (ISP), 361,
criminal statutes 362, 365
counterfeit mark, 108 Iowa
forging/counterfeiting civil statutes
trademarks, 107 common law, 19
imitates of trademark/service dilution, 19
mark, 108–109 trademark registration, 19
punishment for counterfeiting, Unfair Business Practices Act, 19
107 unfair competition, 19
sale of counterfeit goods, 107 criminal statutes
Illinois intellectual property
civil statutes counterfeiting, 119–121
common law, 18
Consumer Fraud and Deceptive Jurisdiction, 334–336
Business Practices Act, 18
dilution, 17 Kansas
trademark registration, 17
civil statutes
unfair competition, 18
common law, 20
Uniform Deceptive Trade
dilution, 20
Practices Act, 18
criminal statutes
sentence, 112–116
criminal statutes
unauthorized use/display of
counterfeiting, 122–123
trademark/trade name/service
Kentucky
mark, 110–111
civil statutes
unauthorized use of name/seal of
common law, 21
trademark/service mark, 112
dilution, 21
Indiana
civil statutes
Unfair Business Practices Act, 21
common law, 19
dilution, 19
criminal statutes
counterfeiting intellectual
property, 124–126
criminal statutes
disposition of property, 124–126
application fraud, 117–118
penalties, 124–126
counterfeiting, 117–118
Kirtsaeng v. John Wiley & Sons, Inc.,
forgery, 117–118
Inducement, 362–364 351
Infringement of a Registered Mark,
384–385, 389–392 Lanham Act, 383–384
Infringement dilution, 386
International treaties impact on, false designation of origin and
340–342 unfair competition, 385–386
418 Index
Grey Market Goods Versus Massachusetts

Counterfeit Goods, 387 civil statutes
history, 387–389 common law, 24
infringement of a registered mark, dilution, 24
jurisdictional issues, 389–394 unfair competition, 24
origin and unfair competition criminal statutes
false designation, 384–385 items/services bearing/identified
registered mark, infringement of, by counterfeit mark, 133–135
384–385 penalties, 133–135
section 32, 399 sales, 133–135
Louisiana Massively multiplayer online role-
civil statutes playing games (MMORPGs),
common law, 22 369–370, 372
dilution, 21 Material difference
trademark registration, 21 consumer confusion, presumption
unfair competition, 22 of, 400
Unfair Trade Practices & examples, 401–406
Consumer Protection Law, overview, 395–400
22 test, 393–394
criminal statutes Michigan
illegal use of counterfeit civil statutes
trademark, 127–128 common law, 25
Consumer Protection Act, 25
Madrid Protocol, 383–384 dilution, 25
Mail fraud, 316–317 trademark registration, 24
Maine unfair competition, 25
civil statutes criminal statutes
dilution, 23 counterfeiting identifying mark,
Maine Unfair Trade Practices 136–138
Act, 23 Minnesota
trademark registration, 22 civil statutes
criminal statutes dilution, 26
criminal simulation, 129 trademark registration, 25–26
Mandatory Victims Restitution Act Unfair Business Practices Act &
(MVRA), 300–303 Consumer Fraud, 26
Maryland unfair competition, 26
civil statutes Uniform Deceptive Trade
common law, 23 Practices Act, 26
dilution, 23 criminal statutes
trademark registration, 23 counterfeited intellectual
Unfair Business Practices Act, property, 139–142
23 penalties, 139–142
unfair competition, 23 Mississippi
criminal statutes civil statutes
trademark counterfeiting, common law, 27
130–132 dilution, 27
Index 419
trademark registration, 27 National Defense Authorization Act

unfair competition, 27 (NDAA), 321
Unfair Trade Practices Act, 27 Nebraska
Mississippi civil statutes
criminal statutes common law, 32
forfeiture, 143 Consumer Protection Act, 32
forfeitures, 144–145, 146–149 dilution, 31
implements to forge trademarks/ trademark registration, 30–31
labels, 144–145 unfair competition, 32
penalties for offenses, 143 Uniform Deceptive Trade
penalties for violations, 146–149 Practices Act, 32
criminal statutes
sale of goods bearing counterfeit
criminal simulation, 163
trademark/label, 146–149
penalty, 163
trademarks and labels, 143
Nevada
Missouri civil statutes
civil statutes common law, 33
common law, 28 Deceptive Trade Practices Act, 33
Unfair Business Practices Act, 28 unfair competition, 33
unfair competition, 28 criminal statutes
criminal statutes counterfeiting trademark/design,
counterfeiting marks, 150–152 164
penalties, 150–152 selling/displaying/advertising
Money laundering, 317 goods with false trademark,
Montana 164–167
civil statutes New Hampshire
common law, 30 civil statutes
Montana Unfair Trade Practices dilution, 34
and Consumer Protection trademark registration, 34
Act, 30 Unfair Business Practices Act, 34
trademark registration, 29 criminal statutes
dealing in counterfeit goods,
168–175
criminal statutes
New Jersey
forfeiture, 153–162
civil statutes
penalties, 153–162
common law, 35
presumption, 153–162 Consumer Fraud Act, 35
restitution, 153–162 trademark registration, 35
trademark counterfeiting, unfair competition, 35
153–162 criminal statutes
Trademark Counterfeiting offenses, 176–179
– Presumption – Penalties trademark counterfeiting,
– Restitution – Forfeiture 1, 176–179
153–162 New Mexico
Music civil statutes
copyright piracy, 346–349 common law, 36
420 Index
dilution, 36 Oklahoma
trademark registration, 36 civil statutes
criminal statutes Consumer Protection Act, 40
forgery, 180–183 Deceptive Trade Practices Act,
New York 40
civil statutes dilution, 40
Consumer Protection from unfair competition, 40
Deceptive Acts and Practices criminal statutes
Act, 37 Civil Actions, 203–206
dilution, 37 damages and attorney fees,
trademark registration, 37 203–206
unfair competition, 37 item bearing counterfeit mark,
criminal statutes use of, 203–206
trademark counterfeiting, penalties, 203–206
184–189 seizure and forfeiture, 203–206
North Carolina Omega S.A. v. Costco Wholesale Corp.,
civil statutes 352
common law, 38 Online piracy, 359–360
dilution, 38 contributory liability, 360–361
trademark registration, 38 Digital Millennium Copyright Act
Unfair Business Practices Act, 38 (DMCA), 365–368
North Carolina inducement, 362–364
criminal statutes scraping, 368–369
criminal use of counterfeit vicarious liability, 361–362
trademark, 190–193 Oregon
North Dakota civil statutes
Unfair Business Practices Act, 39 Unlawful Trade Practices Act, 41
criminal statutes counterfeiting of trademark,
counterfeiting, 194–195 207–210
forgery, 194–195
Pennsylvania
Ohio civil statutes
trademark registration, 39 Unfair Trade Practices and
Unfair Business Practices Act, 39 Consumer Protection Law, 42
Uniform Deceptive Trade trademark counterfeiting,
Practices Act, 39 211–216
criminal statutes Plaintiff’s website, 368–369
trademark counterfeiting, Prima facie case, 342–346
196–202 Principal Register, 383
Index 421
Puerto Rico South Carolina

civil statutes civil statutes
Consumer Protection Act, 43 dilution, 45
unfair competition, 43 Unfair Trade Practices Act, 45
criminal statutes criminal statutes
alteration of information that penalties, 227–233
identifies musical/scientific/ production/reproduction of
literary works, 218–221 counterfeit mark, 227–233
document forgery, 217 sale of goods/services with
possession of instruments for counterfeit mark, 227–233
forging, 217 South Dakota
civil statutes
Quality King, 352 common law, 45
Deceptive Trade Practices and
Racketeer Influenced and Corrupt Consumer Protection Act, 45
Organizations Act (RICO), dilution, 45
Record Rental Amendment. See First- criminal statutes
sale doctrine counterfeiting of trademark as
Rhode Island misdemeanor, 234–235
civil statutes felony, 234–235
common law, 44 forgery, 234–235
Deceptive Trade Practices Act, 44 fraudulent use, 234–235
dilution, 44 making/possessing forgery/
trademark registration, 43 counterfeiting devices, 234–235
unfair competition, 44 sale of goods under counterfeit
criminal statutes mark, 234–235
alteration of trademark/service Stop Online Piracy Act (SOPA),
mark/identification mark, 325–326
222–226 Strickland v. Washington, 288
counterfeiting, 222–226 Supplemental Register, 383
forgery, 222–226
Tariff Act
Sale without standard warranty, Section 526, 399, 400
404–405 Tennessee
Scraping, 368–369 civil statutes
Sentencing common law, 46
general rules, in Federal Court, dilution, 46
trademark counterfeiters, 297–299 unfair competition, 46
Server emulation, 372 criminal statutes
Sixth Amendment confrontation counterfeit marks, 236–237
clause issues, 311–312 forgery, 238
Software punishment, 236–237
copyright piracy, 346–349 violations, 236–237
422 Index
Texas selling goods under counterfeited

civil statutes trademark trade name/trade
common law, 52 device, 243
Deceptive Trade Practices— use of registered trademark
Consumer Protection Act, 52 without consent, 243
dilution, 49–51
enforcement, 49 Vermont
forum for actions, 51 civil statutes
registration of mark, 48–49 common law, 56
trademark registration general Consumer Fraud Act, 56
provisions, 46–47 dilution, 56
criminal statutes criminal statutes
trademark counterfeiting, penalties, 246–247
239–242 violations, 245
Three-dimensional printing, Vicarious liability, 361–362
380–381 Victim and Witness Protection Act
Trademark anti-counterfeiting statutes (VWPA), 303–304
parallel system of, 1–2 Videogames, 369–372
importance, 3–4 Violation
Trademark owners punishment
restitution for, 300–304 single violation, 393
Trade-Related Aspects of Intellectual repeat offenders, 393–294
Property Rights (TRIPs) Virgina
Uruguay Round Agreements Act criminal statutes
(URAA) on, 341 infringement, 248–249
Trade-Related Aspects of International remedies and penalties, 250–251
Property Rights (TRIPS) civil statutes
Agreement, 322–324 common law, 57
Trafficking Consumer Protection Act, 57
in inherently dangerous goods or dilution, 57
services, 328 trademark registration, 56–57
U.S. customers protection, 326–327 Virtual worlds, 369–372
United States v. Booker, 295
Uruguay Round Agreements Act Washington
(URAA), 341, 342 civil statutes
Utah common law, 58
Consumer Sales Practices Act, 55 Unfair Business Practices—
dilution, 54 Consumer Protection Act, 58
trademark registration, 53–54 unfair competition, 58
Unfair Practices Act, 55 counterfeiting, 254
criminal statutes counterfeit mark, 252
forging or counterfeiting imitating lawful brand, 252–253
trademark/trade name/trade intellectual property, 252
device, 244 penalties, 254–256
Index 423
West Virginia duplication/reproduction, 258

civil statutes penalty, 259
common law, 59 trafficking in counterfeit marks,
dilution, 59 259
trademark registration, 59 World Intellectual Property
unfair competition, 59 Organization Copyright
criminal statutes Treaty (WIPO), 365
creation of unauthorized demand World Trade Organization (WTO),
draft, 257 341–342
forgery, 257 World Trade Organization (WTO)
forging/uttering other writing, 257 Member States, 322
penalty, 257 Wyoming
Wire fraud, 317–318 civil statutes
Wisconsin common law, 61
dilution, 60 Unfair Business Practices Act, 61
trademark registration, 59–60 unfair competition, 61
Unfair Business Practices Act, 60 criminal statutes
unfair competition, 60 forgery, 261
criminal statutes, 260 penalties, 261

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Protecting the Brand

Peter Hlavnicka and Anthony Keats

Copyright © Business Expert Press, LLC, 2022.

Cover design by Charlene Kronstedt

Interior design by Exeter Premedia Services Private Ltd., Chennai, India

All rights reserved. No part of this publication may be reproduced,

First published in 2022 by

ISBN-13: 978-1-63742-288-5 (hardback)

Business Expert Press Business Law and Corporate Risk

First edition: 2022

Chapter 1 State Civil and Criminal Anti-Counterfeiting Statutes����1

About the Authors�������������������������������������������������������������������������������407

Our two-volume exploration of brand protection includes informa-

Organizations of brand owners such as the International Anti-­

acceptable standards and production norms of genuine goods. These

Africa contributed to more than 120,000 deaths of children under the

cigarettes.17 Surprisingly, more than 50 percent of those surveyed said

decide to purchase counterfeit goods because they cannot afford the

State Civil and Criminal

Feinberg, “Criminal Enforcement of State Anticounterfeiting Laws,” in Trademark

Congress enacted the Lanham Act in 1946 in order to provide

Why Is the Parallel System of Trademarks

1. A counterfeit of a mark that is registered on the principal register

or ­services sold, offered for sale, or distributed and that is in use

This will differ from the definition of a counterfeit mark provided

U.S. State Civil Statutes

Common Law Not applicable Arizona state courts have recognized

National Football League Properties, Inc. v. Consumer Entertainment, Inc.,

1969); Churchill Downs Distilling Co. v. Churchill Downs, Inc., 90 S.W.2d

Minneapple Co. v. Normandin, 338 N.W.2d 18 (Minn. 1983); North Star

“(5) All applications for renewal under

Substituted “or other type of business

(2)(a) Any registrant or applicant effecting

*Added text in bold.

(b) The secretary may issue in the name of

(6) In a registration that resulted from an

Common Law Not applicable Nebraska state courts recognize

(Neb. App. 2007).

(1) The registration of a mark under this

(i) at least no sooner than six months

(3) If a registrant complies with this

*Amended text in bold

*Amended language in bold.

ing a trade secret;

Alaska (1962, amended 1978)

what the object purports to represent is

tion; classifica- § 44-1455 guilty of a Class 6 felony if either: item that is

Use of Unau- C. A person who knowingly manufactures or 2. “Intellectual prop-

Arizona (1/1/60, amended 5/26/98, amended 4/29/08)

Arkansas (1947, amended 1975)

California (1872, amended 1998, amended 2012)

for the mark to be displayed on the outside of

California (1872, amended 1998, amended 2012)

of Other defined Section components shall be equivalent to

California (1872, amended 1998, amended 2012)

(c) Any person who has

California (1872, amended 1998, amended 2012)

States Patent and

25 items bearing a counterfeit mark. the facts stated goods; or

Connecticut (10/1/71, amended 1997)

Connecticut (10/1/71, amended 1997)

protect, shall be fined not more than

in a manner not authorized by the

Chapter 1 State Civil and Criminal Anti-Counterfeiting Statutes��1

About the Authors��407

Organizations of brand owners such as the International Anti-

or services sold, offered for sale, or distributed and that is in use

(1) The registration of a mark under this

(i) at least no sooner than six months

(3) If a registrant complies with this

Use of Unau- C. A person who knowingly manufactures or 2. “Intellectual prop-

(c) Any person who has

(2) A violation of this section b. Intellectual (2) All seized personal

3. A violation of subsection (1) in connection mark or service mark

4. A violation of subsection (1) Patent and (b) Any personal

(1) If the goods or services to Patent and Trademark Office

(e) A person who knowingly sells, offers

(B) such counterfeiting involves knowingly sold, controlled substances

See also: § 50-626 (B) such counterfeiting involves (2) “intellectual property”

(7) “Counterfeit label” means an

counterfeiting and on conviction: property is a property affixed to (1) under an agree-

See also: § 14-2902(a) (1) is subject to: (3) “Intellectual property”

(d) A person having possession, custody or control “Retail value,” the

(4) the defendant has two or more prior mark are used.

(1) the violation involves more (h) “Trade name” means a word,