Trademarks---Includes Counterfeiting---2AC

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

Counterfeit marks are trademark infringement

Gina Boone, 2021 - J.D. Candidate, Fordham University School of Law, 2022; M.P.S., Public Relations and Corporate Communications, Georgetown University, “Designing Dupes: A Legislative Proposal for Holding Online Marketplaces Contributorily Liable for Counterfeit Goods”, 31 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 1302 (2021). Hein Online, Accessed via University of Michigan //DH

The Lanham Act governs trademark protections in the U.S. and defines trademarks as "any word, name, symbol, or device, or any combination thereof'88 One of its original purposes was to prevent fraud and deception by use of reproductions, copies, or counterfeits of registered marks in commerce.89 It also sought to provide rights and remedies respecting trademarks, trade names, and unfair competition.90 The Lanham Act has defined counterfeit as, "a spurious mark which is identical with, or substantially indistinguishable from, a registered mark."91 To prove direct infringement for counterfeit trademarks under § 1114 of the Lanham Act, a plaintiff must show that the defendant used the mark in commerce without consent and that such use is likely to cause confusion.92 Courts will typically apply these elements in a two-prong test to see if the statute protects the mark and whether it causes confusion to a consumer.93

Counterfeiting is trademark infringement

Arielle Percival, 2021 - J.D., University of the Pacific, McGeorge School of Law, “Social Networks, Counterfeit, and Contributory Trademark Infringement: Are Social Media Giants Still Protected Ten Years after Tiffany?”, 52 U. PAC. L. REV. 877 (2021). Hein Online, accessed via University of Michigan //DH

Counterfeiting is a form of trademark infringement.71 A person counterfeits an item by making a copy or imitating an item without authorization and attempts to pass the copy off as the genuine product. 72 On the spectrum of copied items, there are those that display/affix a famous trademark to an item to appear as if the item is genuine.73 Alternatively, there are "dupes" or "knock-offs"-i.e., items that are similar in appearance to the genuine item but do not include the inspired item's mark.74 Both instances of copying intend to benefit from the goodwill of the genuine items' mark; however, the sale of dupes is not always trademark infringement, while the sale of counterfeits is always trademark infringement. 75