[Congressional Bills 108th Congress]
[From the U.S. Government Publishing Office]
[H.R. 4358 Introduced in House (IH)]






108th CONGRESS
  2d Session
                                H. R. 4358

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


_______________________________________________________________________


                    IN THE HOUSE OF REPRESENTATIVES

                              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

_______________________________________________________________________

                                 A BILL


 
 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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