A Trademark Attorney in NY Explains Criminal Infringement Tactics

Under 18 U.S.C. Section 2320, the core elements include use of a counterfeit mark (a spurious or unauthorized mark identical to or substantially indistinguishable from a registered trademark), use in connection with the sale or distribution of goods or services, knowledge that the mark is counterfeit, and intent to deceive or cause confusion. The defendant must act for commercial advantage or private financial gain; casual or non-commercial use does not trigger criminal liability. Courts have held that the government need not prove the defendant knew specific trademark registration details, only that they knew the mark was unauthorized.

Civil trademark infringement requires only that the defendant's use create a likelihood of confusion about the source or sponsorship of goods; intent to infringe is not required. Criminal trademark infringement demands specific intent to deceive or cause confusion, a higher mental state that prosecutors must prove beyond a reasonable doubt. This gap means a defendant might lose a civil infringement suit, yet face acquittal in criminal court if evidence does not support the intent element. Defense counsel often argues the defendant's conduct, while perhaps negligent or reckless, fell short of deliberate deception.

Federal law enforcement, typically the FBI or Homeland Security Investigations, files a criminal complaint based on probable cause, triggering an arrest or summons. The case then moves to a grand jury, which must return an indictment within a specified timeframe or the complaint lapses. Trademark holders who have reported counterfeiting activity should follow up with the investigating agency to ensure their loss documentation and witness availability are flagged early.

After indictment, the defendant typically files motions to suppress evidence, motions to dismiss, and discovery requests. The government must disclose exculpatory evidence under Brady and Giglio standards. Trademark holders can support the prosecution by responding promptly to discovery requests for authentication of their marks, sales records, and pricing data that establish the value of goods sold under the counterfeit mark.

Defendants frequently argue they purchased goods in good faith from what they believed was an authorized distributor, or that they did not understand the trademark registration status of the mark used. This defense is most credible when the defendant is a small business operator or first-time offender with limited access to trademark databases. Prosecutors counter by introducing evidence of prior cease-and-desist letters, trademark office correspondence, or expert testimony that the mark's registration status was readily discoverable.

Yes, if the defendant can demonstrate the use was not for commercial advantage or private financial gain, the criminal statute does not apply. A defendant who used a counterfeit mark on goods given away for free, or in a purely personal context, may have a viable defense. However, courts interpret commercial advantage broadly to include any gain in a business context, even if the defendant did not directly profit from the infringing use.

Preserve chain-of-custody records for all counterfeit samples, including purchase receipts, seller information, and photographs with date stamps. Maintain detailed records of the legitimate trademark holder's own sales, pricing, and distribution channels to establish the market harm caused by counterfeit goods. Create a written summary of all counterfeiting incidents, locations, and dates, and share this with both law enforcement and your civil counsel.

Civil litigation can proceed immediately and independently of criminal prosecution, offering faster injunctive relief and the possibility of damages without waiting for criminal investigation or indictment. Many trademark holders file a trademark infringement action in federal district court while also reporting the conduct to law enforcement; the two tracks do not conflict. Federal courts have authority to grant preliminary injunctions that halt the sale of counterfeit goods, freeze assets, and preserve evidence before trial.

If the defendant is convicted, the trademark holder may submit a victim impact statement to the sentencing judge, detailing the financial loss, reputational harm, and market disruption caused by counterfeiting. The statement can influence the court's assessment of restitution, though restitution depends on the defendant's ability to pay and the judge's discretion.

Criminal trademark infringement cases demand a higher evidentiary standard and proof of specific criminal intent, making them less frequent but more severe than civil claims. Trademark holders benefit from understanding both tracks because civil litigation offers faster injunctive relief, while criminal referral can deter future counterfeiting and support restitution. Early documentation, prompt reporting to federal law enforcement, and coordination with experienced trademark counsel ensure you preserve evidence and maximize the likelihood of meaningful enforcement.