Trademark Counterfeiting: Civil Seizures, Statutory Damages, and Criminal Exposure
By Casey Scott McKay ·
Counterfeiting is the one corner of trademark law where a plaintiff can seize a defendant's inventory before the defendant knows a lawsuit exists, elect statutory damages of up to $2,000,000 per mark per type of goods, collect trebled profits and attorney's fees nearly as of right, and hand the same file to a United States Attorney. This article explains what makes a mark a "counterfeit" under 15 U.S.C. § 1127 and the narrower "counterfeit mark" definition in Section 1116(d)(1)(B), why so many obvious knockoffs fall outside both, and how the ex parte seizure regime Congress built in 1984 actually operates. It works through the treble-damages and fee provisions of Section 1117(b), the statutory damages election under Section 1117(c), and criminal exposure under Section 2320 of Title 18. It traces contributory liability from Inwood Laboratories through Tiffany v. eBay, the 375 Canal landlord judgment, and the Ninth Circuit's specific-knowledge rule in Redbubble, and explains why prejudgment asset freezes survive Grupo Mexicano in the Second Circuit but are now under sustained attack in mass "Schedule A" filings. It closes with the questions brand-side counsel cannot yet answer: how to count statutory damage units, how far "substantially indistinguishable" reaches, and what the INFORM Consumers Act and the still-unenacted SHOP SAFE Act do and do not require of platforms.
IP and Technology > Trademarks | Article | Published 16 February 2026 - Updated 5 May 2026 | Casey Scott McKay - marksy.us
Summary. Counterfeiting is the one place in trademark law where a plaintiff can seize a defendant's inventory before the defendant knows a lawsuit exists, elect statutory damages of up to $2,000,000 per mark per type of goods, collect trebled profits and attorney's fees nearly as of right, and refer the same file to a United States Attorney. This article explains what makes a mark a counterfeit under 15 U.S.C. § 1127, why the narrower "counterfeit mark" definition in 15 U.S.C. § 1116(d)(1)(B) controls the powerful remedies, and why many obvious knockoffs fall outside both. It covers the ex parte seizure regime, treble damages and fees under § 1117(b), the statutory damages election under § 1117(c), criminal exposure under 18 U.S.C. § 2320, and the contributory liability line running from Inwood Laboratories through Tiffany v. eBay to Y.Y.G.M. v. Redbubble. It explains why prejudgment asset freezes survive Grupo Mexicano in the Second Circuit and why that survival is now contested. And it marks out what is genuinely unsettled: how to count damage units, how far "substantially indistinguishable" reaches, and what the INFORM Consumers Act and the unenacted SHOP SAFE Act actually require of platforms.
Keywords: trademark counterfeiting · counterfeit mark · ex parte seizure order · section 1116(d) · statutory damages · section 1117(c) · treble damages · 18 u.s.c. 2320 · contributory trademark infringement · tiffany v. ebay · asset freeze · grupo mexicano · cbp recordation · gray market goods · inform consumers act · shop safe act · willful blindness · schedule a litigation · substantially indistinguishable
This is premium Marksy content — the full document is available to subscribers.