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To amend title 18 of the United States Code to strengthen the laws against the

counterfeiting of trademarks, and for other purposes.

IN THE HOUSE OF REPRESENTATIVES

APRIL 7, 1983 Mr. RODINO (for himself, Mr. EDWARDS of California, and Mr. FRANK) introduced

the following bill; which was referred to the Committee on the Judiciary

A BILL To amend title 18 of the United States Code to strengthen the

laws against the counterfeiting of trademarks, and for other purposes.

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Be it enacted by the Senate and House of Representa

2 tives of the United States of America in Congress assembled,

3 That this Act may be cited as the “Trademark Counterfeiting

4 Act of 1983”.

5

SEC. 2. (a) Title 18, United States Code, is amended by

6 inserting after section 2319 the following:

7 “8 2320. Criminal trafficking in counterfeit marks

8 “(a) Whoever in the foreign or domestic commerce of 9 the United States traffics or attempts to traffic in a counter

10 feit mark with intent to deceive or defraud, or to assist in 1 deceiving or defrauding, directly or indirectly, any other

2 person, shall, if such offender is an individual, be fined not

3 more than $250,000 or imprisoned for not more than five

4 years, or both, or, if such offender is a corporation, be fined

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"(1) 'counterfeit mark' means a spurious mark

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Trademark Office, and that is used or is intended

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to be used on or in connection with goods or serv

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control of, with intent to so transfer, assign, or

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"(D) assist another in doing any of the

2

above.

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"(c) In determining the existence of a defendant's intent

4 to deceive or defraud, the trier of fact shall consider, among

5 other pertinent factors, the likelihood that the goods or serv

6 ices on or in connection with which the counterfeit mark is

7 used or intended to be used will be mistaken for goods or

8 services for which the genuine mark is registered and is in

9 use.

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“(d)(1) An action seeking civil remedies for violation of

11 this section may be brought, without regard to the amount in

12 controversy, in any district court of the United States in the

13 district in which the defendant resides, is found, has an agent,

14 or transacts business, or in which the counterfeit mark is

15 found, by an owner, or the designee of an owner, of a mark 16 registered on the principal register in the United States

17 Patent and Trademark Office, or of a mark protected by any

18 of the statutes listed in subsection (c)(1)(B) herein, whose

19 business or property is injured by reason of a violation of this

20 section involving trafficking in a counterfeit of such owner's

21 mark. Upon establishing said violation by a preponderance of

22 the evidence, such civil claimant shall recover

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(A) either treble claimant's damages or treble

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defendant's profits, whichever is greater, and

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“(B) the costs of investigating the violation and prosecuting the suit, including reasonable investigator's

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and attorney's fees.

4 In assessing defendant's profits, the claimant shall be re

5 quired to prove defendant's sales only; defendant must prove

6 all elements of cost or deduction claimed therefrom.

7 “(2) The court, on a motion promptly made, may in its 8 discretion award prejudgment interest on the monetary re9 covery awarded under subsection (d)(1) of this section, at an

10 annual interest rate established under section 6621 of the

11 Internal Revenue Code of 1954, commencing on the date of

12 the service of the civil claimant's pleadings which set forth

13 the claim for monetary recovery and ending on the date such 14 judgment is awarded or for such shorter time as the court 15 deems appropriate. 16 “(3) A final judgment or decree rendered in favor of the 17 United States in any criminal proceeding brought by the 18 United States under this section shall estop the defendant 19 from denying the essential allegations of the criminal offense 20 in any civil proceeding brought by any civil claimant pursu

21 ant to this section.

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"(e) In any civil proceeding brought under this section

23 the district courts of the United States shall have jurisdiction 24 to prevent and restrain trafficking in counterfeit marks by 25 issuing appropriate orders, including, in appropriate circum1 stances, ex parte orders without notice for the seizure of such

2 counterfeit marks and materials as described in subsection (1)

3 herein, pursuant to, and subject to the requirements of, the

4 Federal Rules of Civil Procedure. Any provisional or equita

5 ble remedy that would be available in a comparable civil

6 action commenced under the Act entitled 'An Act to provide

7 for the registration and protection of trademarks used in com

8 merce, to carry out the provisions of certain international

9 conventions, and for other purposes,' approved July 5, 1946

10 (60 Stat. 427; 15 U.S.C. 1127), may, to the same extent and 11 upon a comparable showing, be made available to any party 12 in an action commenced under this section, subject to the

13 conditions and requirements imposed by the Federal Rules of

14 Civil Procedure.

15 “(f) If, in any action brought under this section, the 16 court determines that a mark is counterfeit, the court may

17 order the destruction of all such marks, all means of making

18 such marks, and all goods, articles or other matter bearing

19 such marks, which are in the possession or control of the

20 court or any party to the action; or, after obliteration of the

21 counterfeit mark, the court may order the disposal of the 22 aforesaid materials to the United States, a civil claimant, an 23 eleemosynary institution, or any appropriate private person

24 other than the person from whom the materials were ob

25 tained.

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