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1718. Trademark Counterfeiting -- Defenses

All defenses, affirmative defenses, and limitations on remedies which would be applicable in an action under the Lanham Act for trademark infringement are applicable in a criminal prosecution for trademark counterfeiting under 18 U.S.C. § 2320. See 18 U.S.C. § 2320(c). As a result, no person can be found guilty of the criminal offense of trademark counterfeiting who could have prevailed on a defense to an infringement action brought by the trademark owner. The Joint Statement, which was intended to be the final and authoritative explanation of legislative intent, states that only those defenses "that are relevant under the circumstances will be applicable in a prosecution under this chapter." See Joint Statement on Trademark Counterfeiting Legislation, 130 Cong., Rec. H12076, H12078 (daily ed. Oct. 10, 1984)(hereinafter "Joint Statement").

Among the defenses to a civil infringement suit which are arguably available in a criminal prosecution are the defenses to the incontestability of a trademark owner's exclusive right to use the trademark in commerce set forth at 15 U.S.C. § 1115(b). These include fraud, abandonment, use to misrepresent source, fair use, innocent adoption, prior registration and use, and the so-called "antitrust" defense. 15 U.S.C. § 1115(b)(7). Also arguably relevant to a criminal prosecution are equitable defenses to an infringement action, such as laches or acquiescence. As a practical mater, factual situations which give rise to prima facie criminal cases with prosecutive merit are unlikely to give rise to viable defenses.

[cited in Criminal Resource Manual 1718; JM 9-68.100]

Updated January 17, 2020