Законодательство о защите товарных знаков в США: от истоков до 1984 года

The Trademark Counterfeiting Act of 1984 is a United States federal law that amended the federal criminal code to make it a federal offense to violate the Lanham Act by the intentional use of a counterfeit trademark or the unauthorized use of a counterfeit trademark. The act established penalties of up to five years imprisonment and/or a $250,000 fine ($1,000,000 fine for a corporation or other legal entity) for selling or attempting to sell counterfeit goods or services. It increased such penalties for a second or subsequent conviction under the Act.

Trademark infringement involves the determination of the probability of confusion by consumers between two marks. Similarity of appearance, phonetics, and meaning as well as channels of trade, direct competitiveness, strength of the famous mark, and evidence of actual confusion can determine trademark infringement. Remedies of trademark infringement include, but are not limited to; attorneys' fees, destruction of infringing products and any other materials bearing the infringing mark, profits obtained by the counterfeiter from the infringing products, and injunction relief.

Trademark law dates back to the age of President Ulysses S. Grant starting in the late 19th century with the Trademark Act of 1870. The Trademark Act of 1870 was the first trademark act passed in the nation and grounded trademark protection into Article 1 of the U. S. Constitution. The act covered many different aspects of trademark law but failed to cover trademark counterfeiting. After much protest from merchants and manufactures around the country, Congress amended the act to make counterfeiting a crime. This, however, was short lived, as the case U. S. v. Steffens in 1879 ruled that Article One of the Constitution could not serve as a basis of authority and thus making the Trademark Act of 1870 unconstitutional. All trademark acts after the 1870 one, including the 1881 Trademark Act and the 1946 Trademark Act (The Lanham Act), make no mention of the trademark counterfeiting provision of the 1870 act. By the 1970s, counterfeiting was costing U. S. companies billions of dollars, upwards of $100 billion in the years leading up to the Trademark Counterfeiting Act of 1984. Unless the counterfeiting manufacturer was large enough, little could be done to prosecute illegal counterfeiters. Most counterfeit manufactures were small companies that once a civil suit was filed against them, would virtually disappear. Lack of penalties for counterfeiters also meant that products could be sold that were not safe and up to regulatory standards including medications, cosmetics, and machinery parts. In enacting the Trademark Counterfeiting Act of 1984, Congress sought to provide trademark owners with more powerful weapons against persons involved in trademark counterfeiting, including protection of not only intentional copying of trademarks, but also entire products as well. Those who were in favor of the act were pleased with it while those against it claimed it was "manifestly unfair", "heavy handed", and "overreaching".

One of the most powerful provisions under the Trademark Act of 1984 is that of ex parte seizure. Under this part of the act, an aggrieved party may seize the counterfeit goods, business documents, and machines used that the counterfeiter has without notice to the counterfeiter. The section on ex parte seizure amends the Lanham Act, creating stronger remedies in civil cases involving the intentional use of counterfeit trademarks.