Counterfeiting is first-degree trademark infringement under the Lanham Act
Patricia E. Campbell, 2023 - Law School Professor and Director of the Intellectual Property Law Program at the University of Maryland Carey School of Law “Debugging the Trademark Laws: The Lanham Act and Counterfeit Microelectronics,” 31 TEX. INTELL. PROP. L.J. 211 (2023). Hein Online. Accessed via University of Michigan //DH
When the trademark owner prevails and the defendant is found to have engaged in use of a counterfeit mark, enhanced damages and other remedies are available. Under § 35(b) of the Act, willful use of a counterfeit mark subjects the user of the infringing mark to treble damages. 155 The trademark owner also has the option to elect an award of statutory damages instead of actual damages and profits.156 The purpose of § 35 is "to take all the economic incentive out of trademark infringement."157 However, under the Lanham Act, not all trademark infringement rises to the level of counterfeiting. Counterfeiting is "the act of producing or selling a product with a sham trademark that is an intentional and calculated reproduction of the genuine trademark.", 158 It is "'hard core' or 'first degree' trademark infringement and is the most blatant and egregious form of 'passing off."'159 It has been characterized as an aggravated form of trademark infringement "that seeks to trick the consumer into believing that he or she is getting the genuine article."160