OPEN: Online Protection & ENforcement of Digital Trade Act

Original Passage

(C) uses counterfeit marks in a manner that violates section 32(1) of the Lanham Act (15 U.S.C. 1113(1)).

Suggested Edits

(C) uses a counterfeit marks mark, as that term is defined in section 34(d) of the Lanham Act or section 2320 of title 18, United States Code, (in a manner that violates section 32(1) of the Lanham Act (15 U.S.C. 1113(1)).
ANKUR A.    Dec 8th, 2011 8:17 pm
8 Likes, 1 Dislikes
  • You need a definition of counterfeit mark which is the same as the definition in the Lanham Act, otherwise any trademark holder can assert that OPEN's definition of it should be broader than it is in the Lanham Act to go after websites that are not trading in truly counterfeit goods but are selling goods from another country which are genuine but not authorized by the U.S. trademark holder. For example, the manufacturers of many products in foreign countries will sell their trademark in the USA to an American distributor. Without defining in OPEN what precisely a counterfeit mark is, the American distributor could argue that a website selling the foreign manufacturer's authentic goods to Americans is selling counterfeits of their U.S. trademarked goods. But in this example, the foreign website is selling the identical goods manufactured by the same manufacturer. Such goods are foreign and genuine and do not bear a counterfeit mark under the Lanham Act definition of "counterfeit mark". Rather they are simply unauthorized by the U.S. trademark holder. The Lanham Act definition of counterfeit mark specifically excludes from its definition of a counterfeit mark any mark or designation for which the producer or manufacturer was, at the time of the manufacture or production, authorized to use the mark. This exclusion effectively precludes trademark owners from seeking counterfeiting relief for parallel imports, gray-market goods, and production overruns.
    ANKUR A.    Dec 8th, 2011 8:17 pm
    4 Likes, 1 Dislikes