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Counterfeiting Claims and Remedies: Not Limited to Cases Involving “Stitch-for-Stitch” Copies

Availability of Special Remedies for Counterfeiting in a Broader Universe of Cases

Recording of a 90-minute premium CLE video webinar with Q&A

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Conducted on Friday, January 26, 2024

Recorded event now available

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This CLE webinar will guide IP counsel on issues related to counterfeiting and the available remedies. The panel will review various counterfeiting cases and discuss how they fit under the Lanham Act. The panel will address how the courts have addressed counterfeiting cases and their various approaches. The panel will also offer best practices for navigating the counterfeiting minefield.


Recovering meaningful monetary awards in Lanham Act cases is challenging, even where a likelihood of confusion is proven. But, in cases of infringement that involve the use of a counterfeit mark, the Lanham Act provides for special remedies, including statutory damages or mandatory treble damages and attorneys' fees. Requests for these special remedies in a complaint can improve your clients' chances of obtaining an early and favorable settlement, assist in obtaining larger awards in cases of default, and increase monetary awards after trial. It is important, therefore, to know whether your case involves the use of a counterfeit mark.

In the paradigmatic example of counterfeiting, illicit sellers offer cheap knock-offs that attempt to copy "stitch-for-stitch" every aspect of a genuine good. Many district courts have found that the Lanham Act's special remedies for counterfeiting are available only in such cases. Indeed, until recently, McCarthy's treatise suggested this as well. To date, however, no appellate court has endorsed this approach. And, the plain language of the Lanham Act does not support this interpretation.

In fact, the Lanham Act's special remedies for counterfeiting are available in any case of infringement "involving" the use of a "counterfeit mark." A "counterfeit mark" is a mark that is identical, or substantially indistinguishable from, a registered mark and applied to the same type of goods as in the registration. Thus, the Lanham Act's special remedies for counterfeiting should be available in any case of infringement involving an identical mark, even if the goods to which it is applied, or their packaging, differ in appearance from the mark owner's goods.

The Ninth Circuit has recently suggested that this analysis is correct and the relevant section of McCarthy has recently been updated to reflect that the relevant issue is the similarity of the marks and not the similarity of the parties' products. The issue is presently before the Fifth Circuit Court of Appeals as well.

Listen as our authoritative panel of IP attorneys examines the special remedies available in cases involving counterfeit marks, discusses the relevant statutory language, reviews various district court cases and discusses how they fit, or do not fit, under the statutory language of the Lanham Act, as well as outlines current developments in this area. Finally, the panel will offer best practices for navigating the counterfeiting minefield.



  1. The Lanham Act's special remedies for counterfeiting
  2. Statutory language and definitions
  3. Inconsistent district court approaches and the requirement for "stitch-for-stitch" copying
  4. Recent developments
  5. Best practices


The panel will review these and other notable issues:

  • Current trends in counterfeiting and available remedies
  • Court treatment of counterfeiting and handling the inconsistent treatment
  • Steps for IP counsel to pursue legal action against counterfeiters


Berman, Rod
Rod S. Berman

Partner, Chair of Intellectual Property Group
Jeffer Mangels Butler & Mitchell

Mr. Berman focuses on patent, trademark, trade dress, copyright, unfair competition and internet responsibilities. His...  |  Read More

Sparkman, Jessica
Jessica B. Sparkman

Jeffer Mangels Butler & Mitchell

Ms. Sparkman represents clients in a variety of industries in all facets of trademark, copyright, and trade secret law,...  |  Read More

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