Summary. Counterfeiting is trademark infringement with the volume turned up, and Congress gave brand owners a set of remedies that exist nowhere else in intellectual property law: ex parte seizure of goods and records, mandatory treble damages, statutory damages of up to $2 million per mark per type of goods, and criminal penalties. This article explains what legally counts as a counterfeit, how the ex parte seizure procedure in 15 U.S.C. § 1116(d) actually works and why it is used less often than people assume, and how the modern enforcement workhorse operates: the Schedule A case, in which a brand joins dozens or hundreds of anonymous online sellers in a single complaint, obtains a sealed temporary restraining order freezing their marketplace accounts, and serves them by email. It covers the mounting judicial criticism of that practice, the joinder and personal jurisdiction defenses that are starting to work, contributory liability for marketplaces and landlords after Tiffany v. eBay and Inwood, customs recordation and border enforcement, criminal referrals, and defense strategy for sellers who are swept up. It closes with a program-building checklist, a worked example, an FAQ, and related reading.

A brand-protection manager opens a spreadsheet on Monday morning. Overnight, an automated marketplace crawler flagged 1,340 listings across four platforms offering her company's flagship product at 12 percent of retail. Some are obvious fakes with misspelled packaging. Some are photographic copies of her own product photography. A few are so good that her own quality team could not tell without opening the housing.

She has three questions, and they are the right ones. Which of these are legally "counterfeit," as opposed to merely infringing or gray market? What can a federal court actually do about anonymous sellers in another hemisphere? And what will it cost per listing?

This article answers all three.

The short answer

  • A counterfeit mark is "a spurious mark which is identical with, or substantially indistinguishable from, a registered mark." 15 U.S.C. § 1127. Not every infringement is a counterfeit; the mark must be a near-exact copy used on the goods or services for which the mark is registered.
  • Enhanced civil remedies apply: mandatory treble profits or damages plus attorney's fees under § 1117(b) absent extenuating circumstances, or, at the plaintiff's election, statutory damages of $1,000 to $200,000 per counterfeit mark per type of goods, rising to $2,000,000 for willful use, under § 1117(c).
  • Ex parte seizure of counterfeit goods, means of making them, and business records is available under § 1116(d) on a demanding showing.
  • Criminal liability attaches under 18 U.S.C. § 2320, with penalties up to ten years for a first offense and higher where the goods risk serious bodily injury or death.
  • The dominant enforcement mechanism today is the "Schedule A" case: a single complaint against many anonymous online sellers, a sealed TRO freezing marketplace accounts and payment processors, service by email under Fed. R. Civ. P. 4(f)(3), and default judgments. It works, it is controversial, and courts are beginning to push back on joinder and jurisdiction.
  • Marketplaces and landlords face contributory liability only on a showing of knowledge or willful blindness plus continued supply. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982); Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010).

Part I: What counts as a counterfeit

The statutory definition, read strictly

Section 1127 defines a "counterfeit" as "a spurious mark which is identical with, or substantially indistinguishable from, a registered mark." Section 1116(d)(1)(B) adds the operative limitation for seizure purposes: the mark must be used "in connection with the sale, offering for sale, or distribution of goods or services for which the mark is registered."

Three elements matter in practice:

"Spurious." The mark must be false, not merely similar. A genuine product bearing a genuine mark is never counterfeit, no matter how it got to market. That is the gray market problem, addressed separately in Gray Market Goods and the First Sale Doctrine.

"Identical or substantially indistinguishable." This is a much narrower standard than likelihood of confusion. A mark that is confusingly similar is infringing; a mark that a consumer could not tell apart from the registered mark is counterfeit. Courts sometimes describe the difference as one between imitation and duplication.

"Registered." Counterfeiting remedies attach to federally registered marks. Common law rights, however strong, do not support a counterfeiting claim or a § 1116(d) seizure. This is one of the most concrete arguments for federal registration; see Benefits of Federal Trademark Registration.

Things that are frequently mislabeled counterfeits

  • Gray market goods. Genuine goods diverted from an authorized channel. Wrong claim; use material-difference and first-sale analysis.
  • Overruns. Goods produced by an authorized manufacturer beyond the licensed quantity. These carry genuine marks applied by an authorized applier, and courts have divided on whether they are counterfeit. The better analysis is usually breach of the manufacturing agreement plus infringement, and the contract should say so expressly.
  • Repackaged or refurbished goods. Governed by the material-differences and adequate-disclosure lines of cases, not by counterfeiting law.
  • Knockoffs with different marks. Similar design, different name. This is trade dress or design patent territory. See Design Patents vs. Trade Dress.
  • Uses on goods outside the registration. A counterfeit MERIDIAN mark on shoes is not a counterfeit if the registration covers only banking services. Check the identification of goods carefully.

Getting this right is not pedantry. A counterfeiting claim that fails on the definition costs the plaintiff its treble damages, its statutory damages election, and often its seizure order, and it hands the defendant a fee argument.

Part II: Ex parte seizure under § 1116(d)

What it is

Section 1116(d) lets a court, without notice to the defendant, order federal or state law enforcement to seize counterfeit goods, the means of making them (plates, molds, dies, machinery), and the records documenting the manufacture, sale, or receipt of the goods. It was added by the Trademark Counterfeiting Act of 1984 precisely because counterfeiters destroy evidence the moment they hear from a lawyer.

What the applicant must show

The showing under § 1116(d)(4)(B) is demanding, and every element must be established:

  1. An order other than an ex parte seizure order is not adequate to achieve the purposes of § 1114.
  2. The applicant has not publicized the requested seizure.
  3. The applicant is likely to succeed in showing the defendant used a counterfeit mark.
  4. Immediate and irreparable injury will occur if seizure is not ordered.
  5. The matter to be seized will be located at the place identified.
  6. The harm to the applicant of denying the application outweighs the harm to the legitimate interests of the person against whom seizure would be ordered.
  7. The person against whom seizure would be ordered, or persons acting in concert, would destroy, move, hide, or otherwise make inaccessible the matter if given notice.

The application must be supported by affidavit or verified complaint, and the applicant must post security adequate to pay damages for a wrongful seizure. § 1116(d)(4)(A), (d)(5)(D).

The procedural rails

  • The order must be sealed until the defendant has an opportunity to contest it. § 1116(d)(8).
  • A hearing must be set not less than ten and not more than fifteen days after the order issues, at which the applicant bears the burden of proving the facts supporting the order. § 1116(d)(10).
  • Notice to the U.S. Attorney for the district is required, and the Government may participate. § 1116(d)(2).
  • Federal or state law enforcement carries out the seizure. Private investigators do not execute seizure orders, although they routinely support them.
  • Wrongful seizure creates liability for lost profits, cost of materials, loss of goodwill, punitive damages where seizure was sought in bad faith, and attorney's fees, plus prejudgment interest. § 1116(d)(11). This is a real risk, and it is why sophisticated counsel do not treat the seizure remedy casually.

Why it is used less than you would think

Seizure orders are logistically heavy. They require a physical location, cooperative marshals, a bond, and a hearing within two weeks. Against a warehouse in New Jersey they are excellent. Against 400 storefronts operating through overseas marketplaces they are useless, because there is nothing to seize in the district.

Which is why the enforcement practice moved somewhere else entirely.

Part III: Schedule A litigation

How it works

The modern counterfeiting case, particularly in the Northern District of Illinois but now nationwide, follows a standard sequence:

  1. Investigation. The brand's vendor identifies dozens or hundreds of online storefronts selling apparent counterfeits, makes test purchases, and documents listings, seller aliases, payment accounts, and (where possible) shipping records.
  2. The complaint names one or a few known defendants and then "The Partnerships and Unincorporated Associations Identified on Schedule A," attaching a sealed schedule listing the storefront names.
  3. A motion to seal is filed on the theory that public filing would tip off defendants who would then dissipate assets and open new stores.
  4. An ex parte TRO is sought, typically including: a prohibition on further sales; an order requiring marketplaces (Amazon, eBay, Walmart, AliExpress, Temu, Etsy) to disable the listings and the stores; an asset freeze reaching the sellers' marketplace and payment-processor balances; expedited discovery from the platforms and payment processors; and authorization for alternative service by email or electronic publication under Fed. R. Civ. P. 4(f)(3).
  5. A preliminary injunction follows, usually unopposed.
  6. Default judgments issue against most defendants, with statutory damages awarded under § 1117(c) and the frozen funds transferred to the plaintiff.

The economics are compelling for brand owners. A single filing fee, one set of motion papers, and a contingency-friendly cost structure can shut down hundreds of storefronts and recover real money in a few months. Filing volumes have grown enormously, and in some districts these cases represent a substantial share of the entire civil docket.

Why courts are increasingly uncomfortable

Several features of the model sit awkwardly with ordinary civil procedure, and judges have said so with growing bluntness.

Joinder under Rule 20. Rule 20(a)(2) permits joining defendants only if the claims arise "out of the same transaction, occurrence, or series of transactions or occurrences" and share a common question of law or fact. Two hundred unrelated sellers who happen to sell knockoffs of the same handbag are not obviously engaged in the same transaction or series of transactions. Plaintiffs argue that the sellers operate in a coordinated ecosystem with shared suppliers, shared listing templates, and shared payment infrastructure, and sometimes they have real evidence of that. Often the evidence is thin. Courts have severed such cases, dismissed all but the first defendant, and, in some instances, required separate filing fees for each defendant, which changes the economics dramatically.

Personal jurisdiction. The plaintiff typically alleges that each seller shipped one test-purchase item into the forum. The Seventh Circuit blessed that theory in NBA Properties, Inc. v. HANWJH, 46 F.4th 614 (7th Cir. 2022), holding that a foreign online seller who operated an interactive store, accepted an order from the forum, and shipped the product there had purposefully availed itself of the forum. Other courts have been more skeptical, particularly where the only forum contact is a single sale engineered by the plaintiff's own investigator. This is an active and under-litigated issue, and it is worth reading alongside Personal Jurisdiction Over Online and Foreign Defendants.

Asset freezes. Grupo Mexicano de Desarrollo, S.A. v. Alliance Bond Fund, Inc., 527 U.S. 308 (1999), held that a federal court lacks authority to issue a preliminary injunction freezing assets in an action solely for money damages. Counterfeiting plaintiffs distinguish it on the ground that they seek an equitable accounting of profits under § 1117(a), which is equitable relief, and most courts have accepted that distinction. Defendants who actually appear should test it, because the freeze is often the plaintiff's entire leverage.

Sealing. The presumption of public access to judicial records is strong, and blanket sealing of an entire schedule of defendants for weeks or months strains it. Some judges now require sealing motions to be justified defendant by defendant or unseal after the TRO issues.

Overbroad relief. Orders that freeze an entire marketplace account, including proceeds from unrelated genuine merchandise, can sweep far beyond the alleged infringement. Sellers with legitimate businesses have found their entire operating capital frozen over a handful of listings.

The academic and judicial criticism is substantial enough that practitioners should assume the ground is shifting. If you are filing these cases, expect more scrutiny of joinder and more skepticism of blanket sealing. If you are defending one, those are your first two motions.

Defending a Schedule A case

Most defendants default, which is exactly why the model works. For a seller with a real business, the playbook is:

  1. Move fast on the freeze. The money is the emergency. File an appearance and move to dissolve or modify the TRO, and be prepared to show what portion of the frozen funds is unrelated to the accused listings.
  2. Test joinder. Move to sever under Rule 21 and to dismiss for misjoinder. If severance is granted, the plaintiff's economics collapse and settlement postures change immediately.
  3. Test personal jurisdiction. Especially if the only contact is one investigator purchase.
  4. Test the counterfeiting label. If the goods are genuine, gray market, or bear a similar-but-not-identical mark, the § 1117(b) and (c) remedies fall away and the case becomes an ordinary infringement dispute worth a fraction as much.
  5. Test the registration. Is the mark registered for these goods? Is the registration vulnerable? See Petitioning to Cancel a Trademark Registration.
  6. Preserve everything. Sales records, supplier communications, and invoices establishing legitimate sourcing are the difference between a default judgment and a walk-away. See Litigation Holds, Spoliation, and Rule 37(e).
  7. Consider the fee exposure both ways. A plaintiff who names a legitimate seller and refuses to release the freeze after being shown proof of authenticity is building a record for an exceptional-case fee award against itself.

Part IV: Damages

Statutory damages under § 1117(c)

The plaintiff may elect, at any time before final judgment, statutory damages of:

  • $1,000 to $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed; or
  • up to $2,000,000 per counterfeit mark per type of goods if the use was willful.

Two structural points drive the math. First, the multiplier is per mark per type of goods, not per sale or per listing. A seller offering counterfeit handbags and counterfeit wallets bearing two registered marks faces four units of statutory damages. Second, courts have wide discretion within the range and typically consider the defendant's sales volume, the deterrent need, the defendant's cooperation, and any evidence of scale.

In default cases, awards commonly cluster in the tens or low hundreds of thousands of dollars per defendant, calibrated to the frozen funds. Where a defendant appears and litigates, awards tend to be tied more tightly to proven sales.

Treble damages and fees under § 1117(b)

If the violation consists of intentional use of a mark knowing it is counterfeit, the court shall, absent extenuating circumstances, enter judgment for three times profits or damages, whichever is greater, together with reasonable attorney's fees. The word "shall" is doing real work: trebling is the default, not the exception, and the burden is on the defendant to show extenuating circumstances.

Note the election. A plaintiff takes either actual damages/profits (potentially trebled) under § 1117(a)-(b) or statutory damages under § 1117(c). In cases against anonymous sellers with no discoverable financials, statutory damages are almost always the answer. In cases against a domestic distributor with books, an accounting plus trebling can be worth far more.

Prejudgment interest and destruction

Section 1117(b) authorizes prejudgment interest in counterfeiting cases. Section 1118 authorizes destruction of infringing articles, and in counterfeiting cases courts routinely order it.

Part V: Contributory liability — marketplaces, landlords, and payment processors

Brand owners would much rather sue one platform than four hundred sellers. The law makes that hard, deliberately.

The Inwood standard

Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 854 (1982), holds that a defendant is contributorily liable if it (1) intentionally induces another to infringe, or (2) continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement.

Tiffany v. eBay and the generalized-knowledge problem

In Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010), Tiffany proved that a large share of "Tiffany" jewelry sold on eBay was counterfeit and that eBay knew counterfeiting was widespread on its platform. The Second Circuit held that was not enough. Generalized knowledge that counterfeiting occurs does not create contributory liability; the service provider must have contemporary knowledge of which particular listings are infringing and continue to supply its service to those sellers. Because eBay removed listings promptly upon notice, it was not liable.

Tiffany effectively allocated the policing burden to brand owners, and it explains the entire modern architecture of notice-and-takedown brand-protection programs.

Willful blindness counts, though. The court acknowledged that a service provider who "suspect[s] wrongdoing and deliberately fail[s] to investigate" may be charged with knowledge. That principle has produced liability in the physical-space cases, most notably against landlords who rent stalls to known counterfeiters. In Omega SA v. 375 Canal, LLC, 984 F.3d 244 (2d Cir. 2021), the Second Circuit affirmed a substantial verdict against a Canal Street landlord on a willful-blindness theory, and in Luxottica Group, S.p.A. v. Airport Mini Mall, LLC, 932 F.3d 1303 (11th Cir. 2019), the Eleventh Circuit upheld liability against a shopping-mall operator with notice of repeated raids on its tenants.

Practical implications

  • Notices must be specific. A letter saying "your platform is full of fakes" creates no liability. A notice identifying particular listings, with evidence, starts the clock.
  • Repeat-infringer data is the leverage. Where a brand can show it notified a platform about the same seller thirty times and the seller kept opening new stores, the willful-blindness argument becomes serious.
  • Landlords and logistics providers are more exposed than platforms, because their knowledge is more concrete and their ability to act is more direct.
  • Payment processors and domain registrars are usually reached through injunctive relief binding "those in active concert or participation" under Fed. R. Civ. P. 65(d)(2), not through liability.

Part VI: Border enforcement

Recordation with Customs

A federally registered mark may be recorded with U.S. Customs and Border Protection under 19 U.S.C. § 1526 and 19 C.F.R. Part 133. Recordation is inexpensive, lasts as long as the underlying registration, and unlocks a set of tools that private litigation cannot match:

  • Seizure and forfeiture of imported goods bearing counterfeit marks, 19 U.S.C. § 1526(e).
  • Civil fines against importers, § 1526(f).
  • Detention notices giving the brand owner an opportunity to inspect samples and provide an authenticity determination, 19 C.F.R. § 133.21.
  • Disclosure of information from the packaging and the shipment, including importer identity, which is often the only way to find the domestic entity behind an anonymous storefront.
  • Product identification training for CBP officers, which materially increases interdiction rates for brands that invest in it.

Recordation covers copyrights as well. Design patents are not recordable, which is one reason brands with distinctive product configurations should consider trade dress registration alongside design patents. See Design Patents vs. Trade Dress Protection for Product Configurations.

Section 337 at the ITC

For high-volume importation of infringing goods, a complaint under Section 337 of the Tariff Act, 19 U.S.C. § 1337, can produce a general exclusion order binding on all importers, not just named respondents. That is a formidable remedy against anonymous overseas manufacturers, though ITC practice is fast, expensive, and requires a domestic industry showing.

Part VII: Criminal enforcement

Trafficking in counterfeit goods or services is a federal crime under 18 U.S.C. § 2320. The elements are trafficking or attempting to traffic, in goods or services, knowingly using a counterfeit mark on or in connection with them, where the use is likely to cause confusion, mistake, or deception.

Penalties for individuals reach ten years and $2,000,000 for a first offense, and twenty years and $5,000,000 for a subsequent offense; corporate fines are higher. Where the offense involves counterfeit military goods, drugs, or goods whose use is likely to cause serious bodily injury or death, penalties escalate substantially, up to life imprisonment where death results. Section 2320 also reaches counterfeit labels, patches, and packaging separate from the goods, and § 2318 covers counterfeit labels for copyrighted works.

The Counterfeit Drug Penalty Enhancement Act and related amendments reflect a congressional judgment that counterfeit pharmaceuticals, aircraft parts, and electrical components are public safety problems, not merely commercial ones. Brand owners in those sectors should build criminal referral into their program from the outset; the National Intellectual Property Rights Coordination Center accepts referrals and coordinates across agencies.

Practically, criminal referral works best when the brand delivers a package: verified test purchases with chain of custody, laboratory authentication, a documented harm narrative, identified domestic actors, and a witness who can authenticate the genuine article. Prosecutors do not have brand experts; you do.

Part VIII: Marketplace and legislative developments

The INFORM Consumers Act, codified at 15 U.S.C. § 45f and effective in 2023, requires online marketplaces to collect, verify, and disclose identifying information for high-volume third-party sellers (generally, 200 or more discrete sales and $5,000 or more in revenue in a 12-month period), including bank account information, tax ID, and contact information, and to disclose certain seller information to consumers. It is enforced by the FTC and state attorneys general, not by brand owners directly, but it has made seller identification meaningfully easier and provides a factual predicate for discovery.

The SHOP SAFE Act has been introduced repeatedly and would impose contributory liability on platforms that fail to adopt specified screening measures, effectively reversing Tiffany v. eBay by statute for certain goods. It has not been enacted as of this writing.

Platform programs matter more than litigation for most brands. Amazon's Brand Registry, Transparency, and Project Zero; eBay's VeRO; Alibaba's IP Protection Platform; and equivalents at other marketplaces provide takedown pipelines that are faster and cheaper than any court. A well-run brand protection program uses litigation for the small number of repeat, high-volume actors and uses platform tools for the long tail.

Building a counterfeiting enforcement program

Foundation

  • Register the core marks federally, in every relevant class, including the marks that actually appear on the product and packaging.
  • Register the packaging artwork and product photography with the Copyright Office; counterfeiters copy images, and copyright takedowns are often faster than trademark ones.
  • Record marks and copyrights with CBP, and fund officer training.
  • Enroll in every relevant marketplace brand program.
  • Implement product authentication (serialization, holograms, NFC tags, or Transparency-style codes) so authenticity determinations are cheap and defensible.

Detection

  • Deploy marketplace and social-commerce monitoring with human review of flagged listings.
  • Run test purchases with documented chain of custody.
  • Maintain a seller database that links aliases, payment accounts, shipping addresses, and image fingerprints, so you can prove repeat behavior.

Response

  • Tier the response: platform takedown for the long tail, demand letters for identifiable domestic sellers, litigation for high-volume repeat actors, criminal referral for safety-critical goods.
  • Track takedown-to-relist times; that metric is your willful-blindness evidence.
  • Preserve evidence in a form admissible later. See Authenticating Website Evidence and Capturing the Web.

Litigation

  • Verify the counterfeiting elements before pleading them; do not label gray market goods as counterfeit.
  • Decide early between an accounting-plus-trebling theory and a statutory damages election.
  • Plead joinder facts, not conclusions, if you are filing a multi-defendant case.
  • Plan for the frozen funds: how will they be identified, held, and released?

A worked example

Kestrel Audio, Inc. (fictional) makes a $260 pair of wireless earbuds. Its KESTREL word mark and its stylized bird logo are registered for "earphones and headphones" in Class 9. Its packaging artwork is registered with the Copyright Office. It has not recorded anything with Customs.

Monitoring finds three problems.

Problem 1: 220 marketplace storefronts selling earbuds in Kestrel packaging at $28, shipping from overseas. Test purchases confirm the housings are different plastic, the drivers are generic, and the logo is a pixel-accurate copy.

Analysis. This is counterfeiting: spurious marks identical to registered marks on the goods for which they are registered. Statutory damages under § 1117(c) are available, at two marks (word plus logo) times one type of goods, per defendant. Copyright claims on the packaging artwork add § 504 statutory damages, which are available because Kestrel registered before the infringement began. See Copyright Damages and Remedies.

Strategy. Platform takedowns first, using the copyright claim on the images for speed. Then identify the 15 storefronts that relist within 48 hours, and build a Schedule A case against those, pleading actual joinder facts: shared listing templates, identical product photography files, and a common payment processor account. That case will survive a severance motion; a case against all 220 might not.

Problem 2: a domestic distributor selling genuine Kestrel units originally destined for the Korean market, without the U.S. warranty and with Korean-language documentation.

Analysis. Not counterfeit. This is a gray market case, and it succeeds or fails on material differences. Warranty and language differences have supported liability in several circuits. Different claim, different remedies, no trebling.

Problem 3: a shopping mall in a border city where a dozen kiosks sell obvious fakes, and the landlord has been served with three prior notices and witnessed two law enforcement raids.

Analysis. This is the Luxottica and Omega fact pattern. The landlord's knowledge is documented, the conduct continued, and contributory liability is realistic. It is also the case most likely to produce a collectible judgment, because unlike anonymous overseas sellers, the landlord owns real property in the district.

The lesson. One monitoring report produced three legally distinct problems requiring three different tools. Programs that treat every listing as "a counterfeit" waste money on the wrong remedies and lose credibility with courts.

Frequently asked questions

Is every fake a counterfeit? No. A counterfeit uses a mark identical to or substantially indistinguishable from a registered mark on the goods covered by the registration. A similar-but-different mark is infringement, not counterfeiting, and the enhanced remedies do not apply.

How much does a Schedule A case cost? Far less per defendant than ordinary litigation, which is the point. A single filing, one TRO motion, and expedited discovery from platforms can address dozens of sellers. The variables that move cost most are whether the court requires severance, whether any defendant appears, and how much investigation the plaintiff funds up front.

Can I freeze a seller's money? Courts routinely grant asset freezes in counterfeiting cases, on the theory that the plaintiff seeks an equitable accounting rather than pure damages. Grupo Mexicano is the defense argument, and it is stronger than its usage rate suggests. Expect more scrutiny of freezes that sweep in unrelated proceeds.

Can I sue Amazon or eBay for the counterfeits on their sites? Generally not, without contemporary knowledge of specific listings and continued service to those sellers. Tiffany v. eBay remains the controlling framework in the Second Circuit and is widely followed. Build the record with specific, documented notices if you intend to try.

We are a legitimate reseller and our account got frozen. What now? Appear immediately and move to modify the TRO. Gather invoices, supplier records, and authentication evidence. If your goods are genuine, the counterfeiting claim fails and the remaining questions are first sale and material differences. Do not ignore the case; default judgments in these matters are large and are enforced against the frozen funds.

Does trademark registration really matter for this? Enormously. Counterfeiting remedies, CBP recordation, criminal referral, and the § 1116(d) seizure procedure all require a federal registration. Common law rights get you an ordinary infringement claim and nothing else. See The Trademark Process.

How do I prove the goods are fake? Chain-of-custody test purchases, teardown analysis by someone qualified to testify, comparison to authenticated exemplars, and serialization data if you have it. Build this capability before you need it; retrofitting authentication after a case is filed is expensive and looks improvised.

What about counterfeit goods sold through social media and messaging apps? Increasingly the dominant channel, and harder to reach. Platform reporting tools are weaker, sellers move to encrypted messaging for the transaction, and payment often runs through peer-to-peer services. The most effective lever is usually the payment processor and, where the goods physically enter the country, CBP.

Closing thought

Counterfeiting enforcement rewards infrastructure more than it rewards litigation. The brands that do this well have registered the right marks in the right classes, recorded them with Customs, registered their packaging artwork, built authentication into the product, and instrumented their monitoring so that they can prove repeat behavior by a specific seller across a specific timeline. When those brands go to court, they arrive with a story a judge can follow and evidence that survives a defense.

The brands that do it badly file mass complaints against hundreds of unrelated sellers, label everything a counterfeit, and hope for defaults. That model is under increasing judicial pressure, and it deserves to be. The remedies Congress created in 1984 and expanded since are extraordinary, and extraordinary remedies work best when they are aimed carefully.

Related articles

This article is provided for general informational purposes and does not constitute legal advice. Counterfeiting remedies and Schedule A practice vary significantly by district and are in active flux. Consult qualified trademark litigation counsel about any particular enforcement program or dispute.