§ 1116.
(d)
Civil actions arising out of use of counterfeit marks
(1)
(A)
In the case of a civil action arising under
section 1114(1)(a) of this title or
section 220506 of title 36 with respect to a violation that consists of using a counterfeit mark in connection with the sale, offering for sale, or distribution of goods or services, the court may, upon ex parte application, grant an order under subsection (a) of this section pursuant to this subsection providing for the seizure of goods and counterfeit marks involved in such violation and the means of making such marks, and records documenting the manufacture, sale, or receipt of things involved in such violation.
(B)
As used in this subsection the term “counterfeit mark” means—
(i)
a counterfeit of a mark that is registered on the principal register in the United States Patent and Trademark Office for such goods or services sold, offered for sale, or distributed and that is in use, whether or not the person against whom relief is sought knew such mark was so registered; or
(ii)
a spurious designation that is identical with, or substantially indistinguishable from, a designation as to which the remedies of this chapter are made available by reason of
section 220506 of title 36;
but such term does not include any mark or designation used on or in connection with goods or services of which the manufacture
1
So in original. Probably should be “manufacturer”.
or producer was, at the time of the manufacture or production in question authorized to use the mark or designation for the type of goods or services so manufactured or produced, by the holder of the right to use such mark or designation.
(2)
The court shall not receive an application under this subsection unless the applicant has given such notice of the application as is reasonable under the circumstances to the United States attorney for the judicial district in which such order is sought. Such attorney may participate in the proceedings arising under such application if such proceedings may affect evidence of an offense against the United States. The court may deny such application if the court determines that the public interest in a potential prosecution so requires.
(3)
The application for an order under this subsection shall—
(A)
be based on an affidavit or the verified complaint establishing facts sufficient to support the findings of fact and conclusions of law required for such order; and
(B)
contain the additional information required by paragraph (5) of this subsection to be set forth in such order.
(4)
The court shall not grant such an application unless—
(A)
the person obtaining an order under this subsection provides the security determined adequate by the court for the payment of such damages as any person may be entitled to recover as a result of a wrongful seizure or wrongful attempted seizure under this subsection; and
(B)
the court finds that it clearly appears from specific facts that—
(ii)
the applicant has not publicized the requested seizure;
(iii)
the applicant is likely to succeed in showing that the person against whom seizure would be ordered used a counterfeit mark in connection with the sale, offering for sale, or distribution of goods or services;
(iv)
an immediate and irreparable injury will occur if such seizure is not ordered;
(v)
the matter to be seized will be located at the place identified in the application;
(vi)
the harm to the applicant of denying the application outweighs the harm to the legitimate interests of the person against whom seizure would be ordered of granting the application; and
(vii)
the person against whom seizure would be ordered, or persons acting in concert with such person, would destroy, move, hide, or otherwise make such matter inaccessible to the court, if the applicant were to proceed on notice to such person.
(5)
An order under this subsection shall set forth—
(A)
the findings of fact and conclusions of law required for the order;
(B)
a particular description of the matter to be seized, and a description of each place at which such matter is to be seized;
(C)
the time period, which shall end not later than seven days after the date on which such order is issued, during which the seizure is to be made;
(D)
the amount of security required to be provided under this subsection; and
(E)
a date for the hearing required under paragraph (10) of this subsection.
(6)
The court shall take appropriate action to protect the person against whom an order under this subsection is directed from publicity, by or at the behest of the plaintiff, about such order and any seizure under such order.
(7)
Any materials seized under this subsection shall be taken into the custody of the court. For seizures made under this section, the court shall enter an appropriate protective order with respect to discovery and use of any records or information that has been seized. The protective order shall provide for appropriate procedures to ensure that confidential, private, proprietary, or privileged information contained in such records is not improperly disclosed or used.
(8)
An order under this subsection, together with the supporting documents, shall be sealed until the person against whom the order is directed has an opportunity to contest such order, except that any person against whom such order is issued shall have access to such order and supporting documents after the seizure has been carried out.
(9)
The court shall order that service of a copy of the order under this subsection shall be made by a Federal law enforcement officer (such as a United States marshal or an officer or agent of the United States Customs Service, Secret Service, Federal Bureau of Investigation, or Post Office) or may be made by a State or local law enforcement officer, who, upon making service, shall carry out the seizure under the order. The court shall issue orders, when appropriate, to protect the defendant from undue damage from the disclosure of trade secrets or other confidential information during the course of the seizure, including, when appropriate, orders restricting the access of the applicant (or any agent or employee of the applicant) to such secrets or information.
(10)
(A)
The court shall hold a hearing, unless waived by all the parties, on the date set by the court in the order of seizure. That date shall be not sooner than ten days after the order is issued and not later than fifteen days after the order is issued, unless the applicant for the order shows good cause for another date or unless the party against whom such order is directed consents to another date for such hearing. At such hearing the party obtaining the order shall have the burden to prove that the facts supporting findings of fact and conclusions of law necessary to support such order are still in effect. If that party fails to meet that burden, the seizure order shall be dissolved or modified appropriately.
(B)
In connection with a hearing under this paragraph, the court may make such orders modifying the time limits for discovery under the Rules of Civil Procedure as may be necessary to prevent the frustration of the purposes of such hearing.
(11)
A person who suffers damage by reason of a wrongful seizure under this subsection has a cause of action against the applicant for the order under which such seizure was made, and shall be entitled to recover such relief as may be appropriate, including damages for lost profits, cost of materials, loss of good will, and punitive damages in instances where the seizure was sought in bad faith, and, unless the court finds extenuating circumstances, to recover a reasonable attorney’s fee. The court in its discretion may award prejudgment interest on relief recovered under this paragraph, at an annual interest rate established under
section 6621(a)(2) of title 26, commencing on the date of service of the claimant’s pleading setting forth the claim under this paragraph and ending on the date such recovery is granted, or for such shorter time as the court deems appropriate.
([July 5, 1946, ch. 540], title VI, § 34, [60 Stat. 439]; [Pub. L. 93–596, § 1], Jan. 2, 1975, [88 Stat. 1949]; [Pub. L. 98–473, title II, § 1503(1)], Oct. 12, 1984, [98 Stat. 2179]; [Pub. L. 100–667, title I, § 128(c)]–(e), Nov. 16, 1988, [102 Stat. 3945]; [Pub. L. 104–153, § 6], July 2, 1996, [110 Stat. 1388]; [Pub. L. 106–43, § 3(a)(1)], Aug. 5, 1999, [113 Stat. 218]; [Pub. L. 106–113, div. B, § 1000(a)(9) [title III, § 3003(a)(1), title IV, § 4732(b)(1)(B)]], Nov. 29, 1999, [113 Stat. 1536], 1501A–548, 1501A–583; [Pub. L. 107–273, div. C, title III, § 13207(b)(8)]–(10), Nov. 2, 2002, [116 Stat. 1908]; [Pub. L. 110–403, title I, § 102(b)], Oct. 13, 2008, [122 Stat. 4258]; [Pub. L. 116–260, div. Q, title II, § 226(a)], Dec. 27, 2020, [134 Stat. 2208].)