To amend title 18, United States Code, to provide criminal penalties for trafficking in counterfeit marks.

May 13, 2004

Mr. KNOLLENBERG (for himself and Mr. GREEN of Wisconsin) introduced the following bill; which was referred to the Committee on the Judiciary

To amend title 18, United States Code, to provide criminal penalties for trafficking in counterfeit marks.

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled,

SECTION 1. SHORT TITLE; FINDINGS.

(a) Short Title- This Act may be cited as the `Stop Counterfeiting in Manufactured Goods Act'.

(b) Findings- The Congress finds that--

(1) the United States economy is losing millions of dollars in tax revenue and tens of thousands of jobs because of the manufacture, distribution, and sale of counterfeit goods;

(2) the International Chamber of Commerce estimates that seven percent of world trade is in counterfeit manufactured goods, and the counterfeit market is worth $350,000,000,000;

(3) counterfeit automobile parts, including brake pads, cost the auto industry alone billions of dollars in lost sales each year;

(4) counterfeit products have invaded numerous industries including those producing auto parts, electrical appliances, medicines, tools, toys, office equipment, clothing, and many other products;

(5) ties have been established between counterfeiting and terrorist organizations that use the sale of counterfeit goods to raise and launder money;

(6) ongoing counterfeiting of manufactured goods poses a widespread threat to public health and safety; and

(7) strong domestic criminal remedies against counterfeiting will permit the United States to seek stronger anticounterfeiting provisions in bilateral and international agreements with trading partners.

SEC. 2. TRAFFICKING IN COUNTERFEIT MARKS.

Section 2320 of title 18, United States Code, is amended as follows:

(1) Subsection (a) is amended by inserting after `such goods or services' the following: `or intentionally traffics or attempts to traffic in counterfeit marks'.

(2) Subsection (b) is amended to read as follows:

`(b)(1) Upon a determination by a preponderance of the evidence that any articles in the possession of a defendant in a prosecution under this section bear or are counterfeit marks, the court shall order the forfeiture and destruction of such articles, regardless of the criminal culpability of the defendant.

`(2) The court, in imposing a sentence upon a person convicted of a violation of this section, or upon a person who pleads guilty or nolo contendre to a violation of this section, shall order, in addition to any other sentence imposed, that the person forfeit to the United States--

`(A) any property constituting or derived from any proceeds the person obtained, directly or indirectly, as the result of such violation; and

`(B) any of the person's property used, or intended to be used, in any manner or part, to commit, facilitate, aid, or abet the commission of such violation,

if the court in its discretion so determines, taking into account the nature, scope, and proportionality of the use of the property in the offense.

`(3) When a person is convicted of a violation of this section, or pleads guilty or nolo contendre to a violation of this section, the court, pursuant to sections 3556, 3663A(c)(1)(A)(ii), and 3664, shall order the person to pay restitution to the owner of the mark and any other victim of the offense.

`(4) The term `victim', as used in paragraph (3), shall have the meaning given that term in section 3663A(a)(2).'.

(3) Subsection (e)(1) is amended--

(A) in subparagraph (A)(iii), by striking `or' after the semicolon; and

(B) by inserting after subparagraph (B) the following:

`(C) a spurious mark--

`(i) that is identical with, or substantially indistinguishable from, a mark registered on the principal register in the United States Patent and Trademark Office under section 1 of the Lanham Act and in use, whether or not the defendant knew such mark was so registered; and

`(ii) that is applied to or consists of a label, patch, sticker, wrapper, badge, emblem, medallion, charm, box, container, can, case, hangtag, documentation, or packaging of any type or nature that is designed to be affixed to, distributed with, consist of, or otherwise accompany goods or services; or

`(D) a spurious mark--

`(i) that is used in connection with the trafficking of goods or services; and

`(ii) that is identical with, or substantially indistinguishable from, a famous mark that is registered on the principal register in the United States Patent and Trademark Office under section 1 of the Lanham Act and in use, regardless of the goods or services or class of goods or services for which the famous mark is registered, and regardless of whether or not the defendant knew such mark was so registered and famous;'.

(4) Section 2320 is further amended--

(A) by redesignating subsection (f) as subsection (g); and

(B) by inserting after subsection (e) the following:

`(f)(1) In determining whether a particular mark is a `famous mark' under this section, the court may consider information, data, testimony, and documentation regarding factors such as, but not limited to--

`(A) the degree of inherent or acquired distinctiveness of the mark;

`(B) the duration and extent of use of the mark;

`(C) the duration and extent of advertising and publicity of the mark;

`(D) the geographical extent of the trading area in which the mark is used;

`(E) the channels of trade in which the mark is used;

`(F) the degree of general public recognition of the mark;

`(G) the nature and extent of use of the same or similar marks by third parties;

`(H) survey evidence; and

`(I) the record of successful criminal, civil, or administrative enforcement of rights in the mark, including, in particular, the extent to which the mark has been recognized as being famous by Federal or State courts or administrative authorities.

`(2) In order to qualify as a famous mark under this section, the mark must be registered on the principal register of the United States Patent and Trademark Office under section 1 of the Lanham Act.

`(3) The United States shall bear both the burden of proof and persuasion with respect to the determination of whether a particular mark is a famous mark under this section. Evidence, in the form of a certified copy of a published court or administrative opinion, of a prior determination, on the merits, by a Federal or State court or administrative authority, holding that a particular mark is a famous mark (regardless of whether the proceedings leading to the determination were civil, criminal, or administrative in nature), shall create a rebuttable presumption that the mark in question is a famous mark.

`(4) A person may not be prosecuted under this section by virtue of a mark that is a counterfeit mark if the person has, or is the agent or employee of a legal entity that has, lawfully registered that mark on the principal register of the United States Patent and Trademark Office under section 1 of the Lanham Act and that registration is valid at the time of the alleged offense.'.

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