Joint Statement on Trademark Counterfeiting
130 Cong. Rec. H12076, H12078Introduction
Joint Statement on Trademark Counterfeiting Legislation, 130 Cong. Rec.
H12078 (daily ed. Oct. 10, 1984) (hereinafter "Joint Statement").|
JOINT STATEMENT ON TRADEMARK COUNTERFEITING LEGISLATION
On June 28, 1984, the Senate approved S.875, the Trademark
Counterfeiting Act of 1984, whose principal sponsor was Senator CHARLES
McC.MATHIAS, Jr, chairman of the Subcommittee on Patents, Copyrights, and
Trademarks of the Senate Judiciary Committee. That bill was also sponsored
Judiciary Committee--Chairman STROM THURMOND, Senator HOWELL HEFLIN, Senator
WARNER, Senator CHRISTOPHER DODD, Senator ALAN SIMPSON, Senator LOWELL
Senator PETE WILSON, Senator CLAIRBORNE PELL, Senator JESSE HELMS, Senator
LAUTENBERG, Senator JOHN CHAFEE, Senator CHIC HECHT, Senator CHARLES PERCY,
Senator JOSEPH BIDEN, Senator JAMES ABDNOR, and Senator PATRICK LEAHY.
On September 12, 1984, the House of Representatives approved a
measure, H.R. 6071, also titled the Trademark Counterfeiting Act of 1984.
bill was sponsored by Representative WILLIAM J. HUGHES, chairman of the
Subcommittee on Crime of the House Judiciary Committee, Representative PETER
RODINO, Jr. chairman of the Judiciary Committee, Representative HAROLD
ranking Republican member of the Subcommittee on Crime, Representative BRUCE
MORRISON, Representative LARRY SMITH, Representative EDWARD FEIGHAN,
Representative CHARLES SCHUMER, Representative E. CLAY SHAW, Jr.,
F. JAMES SENSENBRENNER, Jr., and Representative NANCY JOHNSON.
The Senate and House bills both aimed at accomplishing three
changes in the law: First, creation of criminal penalties for intentionally
dealing in materials that one knows to be counterfeit; second, authorization
mandatory or virtually mandatory awards of treble (sic) damages and
fees in civil counterfeiting cases; and third, authorization for ex parte
orders for the seizure of counterfeit materials when it can be shown that
defendant would be likely to attempt to conceal or transfer the materials.
The principal sponsors of S. 875 and H.R. 6071 have worked together
draft a compromise bill that incorporates the best features of those two
The amendment to House Joint Resolution 648 relating to trademark
is the product of those negotiations. It retains the three central features
the House and Senate bills, while harmonizing the technical differences
those bills as passed. The present statement explains the provisions of the
compromise bill, although, of course the reports filed by the Senate and
Judiciary Committee with respect to S. 875 and H.R. 6071 should be consulted
to those matters not discussed in this statement.
There are minor differences between this statement and one placed
the CONGRESSIONAL RECORD, October 4, 1984, S13066-S13072, by the
Senator from Maryland, CHARLES McC. MATHIAS. The House and Senate sponsors
intend this statement to be the final and authoritative explanation of the
legislative intent of this act.
COMMITTEE ON THE JUDICIARY
Washington, DC, October 9, 1984.
Hon. William J. Hughes,
Chairman, Subcommittee on Crime,Committee on the
Judiciary, House of Representatives, Washington, DC
Dear Representative Hughes:
I am writing to confirm our understanding, as the chief sponsors of the
Trademark Counterfeiting Act of 1984, about the legislative history of that
As you know, we have worked together to prepare a joint Explanatory
about this legislation. At the time of Senate passage of the Act, as an
amendment to H.J. Res 648, a draft of this Statement was printed at pages
Sl3066-S13072 in the Congressional Record of October 4, 1984. Since then,
have agreed to certain further modifications of the Statement. The Joint
Explanatory Statement that appears in today's Record of House proceedings is
version upon which the Senate and House sponsors of this bill have agreed.
With best wishes,
CHARLES McC. MATHIAS, Jr.
As explained more fully below, this act is intended to apply to counterfeits
of registered trademarks and of Olympic designations that are protected
Section 110 of the Olympic Charter Act, 36 U.S.C. 380. Unless otherwise
indicated, any use of the term "mark" or "trademark" is intended to include
Olympic designations. The scope of this act is narrower than current law,
that it creates enhanced penalties only for certain types of egregious
prohibited by existing law. The bill does not affect current statutory or
law governing other conduct proscribed by the Lanham Act, or other Federal,
State, or local laws relating to trademarks. The same reservation applies
conduct covered by section 110 of the Olympic Charter Act.
T06 Amendments to title 18 of the United States Code that are contained
this bill rely to a great extent on concepts and definitions in the Lanham
the basic Federal statute governing trademarks. Unless it does so
this act does not in any way modify the Lanham Act or judicial
[cited in Criminal Resource Manual 1715; Criminal Resource Manual 1716; Criminal Resource Manual 1717; USAM 9-68.100]