Enforcement & Disputes · For brand owners

Bringing Counterfeiting Claims: Seizures, Freezes, and Statutory Damages

Acciones contra falsificadores: incautaciones, congelamiento de fondos y daños legales.

Counterfeiting is the most serious form of trademark infringement, and the Lanham Act gives brand owners remedies to match: seizure of counterfeit goods without notice, freezes of the seller's funds, treble damages, and statutory damages of up to $2,000,000 per mark per type of goods when the use is willful. Those remedies come with strict requirements. We help brand owners meet them with evidence that holds up.

Discuss your counterfeiting claim Try the statutory damages range tool

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$1,000–$200KStatutory damages per counterfeit mark per type of goods15 U.S.C. § 1117(c)(1)

$2,000,000Ceiling per mark per type of goods if the use was willful15 U.S.C. § 1117(c)(2)

3×Profits or damages, plus fees, for knowing use of a counterfeit15 U.S.C. § 1117(b)

10–15 daysHearing after an ex parte seizure order issues15 U.S.C. § 1116(d)(10)

The legal line

Infringement and counterfeiting are not the same claim

Every counterfeit infringes, but not every infringement is counterfeiting. The difference decides which remedies are available, and some of the strongest ones apply only to counterfeits.

Ordinary infringement asks whether a mark is likely to cause confusion. A look-alike name, a similar logo, or a confusing product label can infringe even though no one would mistake it for an exact copy.

Counterfeiting is narrower. The Lanham Act defines a counterfeit as "a spurious mark which is identical with, or substantially indistinguishable from, a registered mark" (15 U.S.C. § 1127). For the seizure, treble-damages, and statutory-damages provisions, the copied mark must be registered on the Principal Register for the goods or services involved and in use (15 U.S.C. § 1116(d)(1)(B)). Goods made by a manufacturer that was authorized to use the mark for that type of goods are excluded.

So the registration matters. A brand with an unregistered mark, or a registration that does not cover the goods being copied, can still sue for infringement, but cannot use the counterfeiting remedies for those goods. See Federal Trademark Applications.

Counterfeit, or something else?

Exact copy of your registered logo on handbags you registered for: likely a counterfeit
Similar but different name on similar goods: infringement, not counterfeiting
Your genuine goods resold without changes: usually lawful
Genuine goods made for another market, with material differences: a gray-market issue
Factory overruns made without authorization: often treated as counterfeits; facts matter

	Infringement15 U.S.C. §§ 1114, 1125(a)	Counterfeiting15 U.S.C. §§ 1116(d), 1117(b)–(c)
The mark	Confusingly similar	Identical with, or substantially indistinguishable from, the registered mark
Registration	Helpful, but unregistered marks are protected under § 1125(a)	Principal Register registration covering the goods or services involved
Core liability question	Likelihood of confusion	Likelihood of confusion, plus the counterfeit-mark showing
Money	Profits, damages, and costs; damages may be increased up to three times; fees in exceptional cases (§ 1117(a))	Treble profits or damages plus fees for intentional use unless the court finds extenuating circumstances (§ 1117(b)), or statutory damages instead (§ 1117(c))
Ex parte seizure	Not available	Available under § 1116(d)
TRO and asset freeze	Available where an equitable accounting of profits is sought	Same, and common in online-seller cases
Criminal exposure	Generally none	Trafficking in counterfeit goods, 18 U.S.C. § 2320

◆ marks rows where counterfeiting adds to or differs from an ordinary infringement claim.

Before suing

Takedowns and Customs recordation: the first line of defense

Most counterfeit problems should not start with a lawsuit. These tools are faster and cheaper, and they produce evidence if a lawsuit becomes necessary.

01 · Marketplaces

Platform takedowns

Amazon Brand Registry, the Report Infringement form for rights owners not enrolled, and similar programs at other marketplaces remove listings quickly. They do not stop the seller from relisting, and they do not compensate you.

Amazon Brand Registry

02 · The border

CBP recordation

Recording your registration with U.S. Customs and Border Protection lets officers detain and seize counterfeit imports at every port, and after a seizure CBP tells you who made, exported, and imported the goods. That information often points to the real defendant.

CBP recordation · 19 C.F.R. § 133.21

03 · Letters

Cease and desist

Where a seller can be identified and reached, a letter can demand that sales stop, stock be surrendered, and suppliers be named. Letters can tip off a seller with stock to hide, so they are not the right first step when a seizure may be needed.

Cease and Desist Letters

Not sure yet who is behind the listings? Start with a counterfeiting investigation. Copied product photos can also be removed with a DMCA notice.

Ex parte seizure orders

Seizing counterfeits before they disappear

The Lanham Act lets a court order counterfeit goods, the means of making them, and business records seized without advance notice to the seller. Courts grant it only on a strong, specific showing, because it is one of the most intrusive orders in civil litigation.

What the court must find

§ 1116(d)(4)(A)Security

The applicant posts security the court finds adequate to pay damages for a wrongful seizure or wrongful attempted seizure.

§ 1116(d)(4)(B)Notice would not work

An ordinary order on notice, such as a TRO under Rule 65, would not be adequate to achieve the purposes of § 1114.

§ 1116(d)(4)(B)Likely success

The applicant is likely to succeed in showing that the person used a counterfeit mark in selling, offering, or distributing goods or services.

§ 1116(d)(4)(B)Immediate, irreparable injury

Denying the application would cause immediate and irreparable injury, and that harm outweighs the harm to the target's legitimate interests.

§ 1116(d)(4)(B)Location and secrecy

The matter to be seized is at the place identified, and the applicant has not publicized the requested seizure.

§ 1116(d)(4)(B)Risk of destruction

The person, or people acting with them, would destroy, move, hide, or otherwise make the matter inaccessible if given notice.

From application to hearing

Before filingNotify the U.S. AttorneyThe court will not receive the application without reasonable notice to the U.S. Attorney for the district (§ 1116(d)(2)).
ApplicationSpecific factsEvidence from the investigation: test purchases, comparisons, location, and the seller's conduct.
OrderSealed orderThe order and papers stay sealed until the target can contest them (§ 1116(d)(8)).
Within 7 daysSeizureCarried out by federal law enforcement, which state or local officers may assist, within the period set, no later than 7 days after issue (§ 1116(d)(5), (9)).
Days 10–15HearingUnless waived or moved for good cause, the applicant must show the facts still support the order, or it is dissolved or modified (§ 1116(d)(10)).
AfterwardWrongful-seizure riskA person harmed by a wrongful seizure can recover lost profits, costs, goodwill, punitive damages for bad faith, and usually fees (§ 1116(d)(11)).

Because of these requirements, many brand owners instead seek a TRO with an order to preserve and sequester goods. Which route fits depends on where the goods are and what the evidence shows.

TROs and asset freezes

Stopping sales and preserving the money

Online counterfeiters can empty a marketplace account in hours. A temporary restraining order and an asset freeze aim to stop the sales and keep the proceeds available for judgment.

A court can issue a TRO without notice under Fed. R. Civ. P. 65(b)(1) only on specific facts, in an affidavit or verified complaint, showing immediate and irreparable injury before the other side can be heard, plus counsel's certification of efforts to give notice and why notice should not be required. A TRO issued without notice lasts no more than 14 days unless extended for good cause or by consent (Rule 65(b)(2)). The movant must post security the court considers proper (Rule 65(c)).

The asset freeze rests on equity. In Levi Strauss & Co. v. Sunrise International Trading Inc., 51 F.3d 982 (11th Cir. 1995), the Eleventh Circuit held that a district court may freeze assets to preserve the equitable remedy of an accounting of the defendant's profits under 15 U.S.C. § 1117. The court approved freezing assets that could be used to satisfy that award; it did not decide whether assets unrelated to the infringing sales could be frozen. That limit is why courts increasingly ask whether a freeze is sized to the profits at issue.

In online cases, the order usually directs marketplaces and payment processors to hold the seller's funds and disable listings, and allows expedited discovery of account information. Nonparties with actual notice who act in concert with a defendant are bound by an injunction under Rule 65(d)(2).

What courts look for in a freeze request

Evidence that each defendant sold counterfeits, not just similar products
Evidence of a real risk that assets will be moved offshore
A freeze amount tied to the likely profits, not every dollar in the account
A bond that reflects the number of defendants and accounts restrained
A basis for personal jurisdiction over each defendant
Diligence in finding addresses before asking for email service

Money remedies

Statutory damages, treble damages, and attorney's fees

Counterfeiters rarely keep honest books. The Lanham Act answers that with two remedies that do not depend on proving exactly what was sold.

Statutory damages

Instead of actual damages and profits, a plaintiff may elect, at any time before final judgment, statutory damages of not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just. If the use was willful, the ceiling rises to $2,000,000 per counterfeit mark per type of goods or services.

15 U.S.C. § 1117(c)

Treble damages and fees

Where a defendant intentionally used a mark knowing it was a counterfeit, or knowingly supplied goods or services needed for that use, the court must award three times the profits or damages, whichever is greater, plus a reasonable attorney's fee, unless it finds extenuating circumstances. Prejudgment interest may be added.

15 U.S.C. § 1117(b)

Profits and damages

The ordinary Lanham Act menu still applies: the defendant's profits, the plaintiff's damages, and costs. Willfulness is not a precondition to a profits award (Romag Fasteners, Inc. v. Fossil, Inc., 2020). See Damages Evaluations.

15 U.S.C. § 1117(a)

Destruction of goods

Courts can order counterfeit goods, labels, packaging, and the means of making them delivered up and destroyed.

15 U.S.C. § 1118

When the case is also a crime

Trafficking in goods or services while knowingly using a counterfeit mark is a federal crime under 18 U.S.C. § 2320. For a first offense, an individual faces up to 10 years in prison and a fine of up to $2,000,000; a company faces a fine of up to $5,000,000. Higher penalties apply to counterfeit drugs and military goods.

Prosecutors, not brand owners, decide whether to bring charges. Where the volume, health risk, or organized nature of the activity justifies it, we can refer evidence to federal authorities while the civil case proceeds. Civil remedies remain the brand owner's main tool, and a referral does not delay them.

Choosing between actual and statutory damages

Statutory damages fit when sales records are missing, false, or overseas
Treble profits may exceed statutory damages for a large, well-documented seller
The election can be made any time before final judgment
Courts weigh willfulness, deterrence, the defendant's profits, and the plaintiff's losses
Collecting a judgment against an offshore seller is a separate question; frozen funds often matter most

Statutory damages range

See how the statutory range scales

Statutory damages are counted per counterfeit mark, per type of goods or services. This tool shows the range the statute allows for the numbers you enter. It is illustrative only.

Counterfeit marks used Types of goods or services Willful use found?

6mark-and-goods combinations

$6,000statutory minimum

$1,200,000statutory maximum

Illustrative only, not a prediction. The figures multiply the per-unit range in 15 U.S.C. § 1117(c): $1,000 to $200,000 for each counterfeit mark per type of goods or services, with a ceiling of $2,000,000 if the use was willful. The court sets the actual award within the range "as the court considers just," usually per defendant, and many awards fall well inside it. Courts also differ in how they count marks and types of goods. Statutory damages replace, and cannot be added to, actual damages and profits.

Multi-defendant online-seller actions

Suing many online sellers at once, and the growing scrutiny

Brand owners facing hundreds of anonymous storefronts sometimes sue them together, listing the sellers in a sealed exhibit often called "Schedule A." Courts have become much more demanding about these cases.

The usual pattern is a single complaint against many storefronts, a sealed motion for an ex parte TRO that freezes the sellers' marketplace accounts, court-authorized email service on sellers abroad, and then a preliminary injunction and default judgments with statutory damages. Most of these cases have been filed in the Northern District of Illinois.

Recent rulings have narrowed the practice:

In Eicher Motors Ltd. v. Schedule A Defendants (N.D. Ill. Aug. 8, 2025), Judge Kness denied a TRO and rejected the routine practice of prejudgment ex parte asset freezes against long lists of sellers who have not appeared.
Several Northern District of Illinois judges have issued standing orders requiring plaintiffs to justify joining many defendants under Rule 20, and some now require bonds of at least $1,000 per defendant or a reasoned basis for the amount. In September 2025, the Chief Judge of the District of New Jersey limited complaints to one defendant or a group under common operation.
In Collectanea J. Ltd. v. Schedule A, No. 25 C 4839 (N.D. Ill. Mar. 31, 2026), Judge Kocoras dissolved a preliminary injunction and asset freeze covering 252 sellers, finding them improperly joined and the joinder allegations conclusory.
Email service on sellers in mainland China is no longer routine. The Second Circuit (Smart Study, 2025) and the Seventh Circuit (Kangol, May 29, 2026) held that the Hague Service Convention does not permit it, unless the seller's address could not be found with reasonable diligence.
Courts have awarded fees against plaintiffs who restrained the wrong sellers or sued without personal jurisdiction.

The practice is changing quickly and differs by judge. Before filing, we check the current standing orders of the court and judge.

How we would build a multi-defendant case

Join sellers only where the investigation shows a real link: a common operator, payee, supplier, or coordinated listings
Prove each defendant's counterfeit sale with a test purchase or equivalent evidence
Size any freeze to likely profits, and propose a bond the court can accept
Show diligence in finding physical addresses, and serve through the Hague Convention where it applies, before seeking email service
Consider separate actions, or a smaller group, where links are weak
Choose the forum with personal jurisdiction in mind, including the Southern and Middle Districts of Florida for Florida sellers

Sellers named in one of these cases should see Schedule A Disputes.

For sellers

If you sourced counterfeits without knowing

Many accused sellers bought inventory from a wholesaler or liquidator they trusted. Lack of knowledge matters, but it is not a complete defense.

Trademark infringement does not require intent. A seller who sold counterfeits can be liable even without knowing they were fake. What knowledge changes is the remedy: treble damages under § 1117(b) require intentional use knowing the mark was counterfeit, and the $2,000,000 statutory ceiling requires willfulness. The $1,000 statutory minimum per mark per type of goods can still apply to an innocent seller.

Genuine goods are different. Reselling genuine products bought from the brand or an authorized source is generally lawful, as long as the goods are not materially different from what the brand sells in the United States. Invoices and supplier records are what prove the difference.

If you receive a letter, see Responding to a Cease and Desist. If your marketplace account has been frozen in a multi-defendant case, see Schedule A Disputes, and act before the response deadline.

What to do in the next 48 hoursIf you are accused

Stop selling the accused items. Pause the listings; do not delete them or the records.
Preserve everything. Invoices, supplier messages, payment records, and sales data.
Find the deadline. Note any response date in the letter or the court papers.
Do not contact the brand owner alone. Statements made now can be used later.
Look at your supplier. Check any warranty or indemnity in your purchase terms.
Get advice. Upload the letter or court papers for review.

How we work

How we build a counterfeiting case

Each step is designed so the evidence holds up when the other side, or a skeptical judge, examines it.

Week 1Check the registrationsPrincipal Register, correct owner, and classes that cover the counterfeit goods.
Weeks 1–3InvestigateTest purchases, comparisons, and tracing of sellers and stock.
DecisionChoose the toolTakedown, letter, CBP referral, seizure, TRO, or a combination.
FilingComplaint and motionsVerified complaint, declarations, proposed orders, and bond.
DaysExecuteServe platforms and processors, coordinate any seizure.
WeeksPreliminary injunctionHearing, discovery of account data, and expansion to linked sellers.
ResolutionJudgment or settlementStatutory damages election, release of frozen funds, destruction of goods.

Robert H. Thornburg leads the firm's Lanham Act litigation and counterfeit enforcement in the Southern, Middle, and Northern Districts of Florida and the Eleventh Circuit. Susan J. Latham, a former in-house brand-enforcement lawyer, handles trademark and copyright claims that often travel with counterfeiting cases. For cases in other districts, we work with local counsel or appear where admitted; out-of-state firms can also retain us as Florida local counsel.

Lessons learned

Five common mistakes in bringing counterfeiting claims

The strongest remedies come with the strictest requirements. These are the mistakes that most often cost brand owners.

Registration does not cover the goods

A registration for clothing does not support counterfeiting remedies for phone cases bearing the same logo. The counterfeit mark must be registered for the goods involved.

15 U.S.C. § 1116(d)(1)(B)

Lesson

File for the categories counterfeiters target, before you need them.

Calling similar goods counterfeit

Labeling a look-alike as a counterfeit, or genuine resold goods as fake, invites a fight over the facts and can expose the brand owner to claims.

§ 1127 definition

Lesson

Match the claim to the evidence.

Joining unrelated sellers

Boilerplate allegations that hundreds of sellers act in concert no longer persuade many judges. Misjoinder can unwind the whole freeze.

Fed. R. Civ. P. 20

Lesson

Plead specific links, or file separately.

Over-broad freezes and token bonds

Freezing whole accounts far beyond any plausible profits, backed by a nominal bond, is a common ground for dissolution and fee awards.

Rule 65(c) · Levi Strauss

Lesson

Tie the freeze to profits and propose a realistic bond.

Warning the seller first

A letter sent before a seizure or freeze lets the seller move stock and money. The surprise that justified ex parte relief is gone.

§ 1116(d)(4)(B)

Lesson

Decide on the remedy before any contact.

Questions

Frequently asked questions

What is the difference between a counterfeit and an infringing product?

An infringing product uses a mark likely to cause confusion. A counterfeit uses a mark that is identical with, or substantially indistinguishable from, a registered mark. For the seizure, treble-damages, and statutory-damages remedies, the mark must be registered on the Principal Register for the goods involved.

How much are statutory damages for counterfeiting?

Under 15 U.S.C. § 1117(c), the court may award not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services, as it considers just, and up to $2,000,000 per counterfeit mark per type of goods or services if the use was willful. The plaintiff elects statutory damages instead of actual damages and profits, at any time before final judgment.

Can I get an order seizing counterfeit goods without warning the seller?

Yes, under 15 U.S.C. § 1116(d), if you show specific facts, including that notice would lead the seller to hide or destroy the goods, that you are likely to succeed, and that you have not publicized the seizure. You must post security, give notice to the U.S. Attorney, and be ready for a hearing 10 to 15 days after the order issues.

Can a court freeze a counterfeiter's marketplace funds?

Courts in the Eleventh Circuit can freeze assets to preserve an equitable accounting of profits, under Levi Strauss & Co. v. Sunrise International Trading Inc. (11th Cir. 1995). Courts increasingly require evidence of a risk that assets will be moved and a freeze sized to the profits at issue.

Do I need a federal registration to bring a counterfeiting claim?

For the counterfeiting remedies, yes: a Principal Register registration covering the goods or services involved. Without one, you may still have infringement or unfair competition claims, but not statutory damages for counterfeiting or an ex parte seizure.

Should I sue many online sellers in one case?

Only where the evidence ties them together. Courts, especially in the Northern District of Illinois, now scrutinize joinder, asset freezes, and bonds closely, and one court in 2026 dissolved an injunction covering 252 sellers for misjoinder. Separate or smaller cases are often safer.

Will the government prosecute the counterfeiter?

Trafficking in counterfeit goods is a federal crime under 18 U.S.C. § 2320, but prosecutors decide which cases to bring. We can refer strong cases while the civil claim proceeds.

I sold counterfeits without knowing. Am I liable?

You may be, because infringement does not require intent. Knowledge affects the remedies: treble damages require knowing use, and the higher statutory ceiling requires willfulness. Stop selling, preserve records, check your supplier terms, and get advice before responding.

Counterfeiting Investigations Schedule A Disputes U.S. Customs (CBP) Recordation Trademark Infringement Litigation Cease and Desist Letters Luxury Goods Damages Evaluations Federal Trademark Applications Florida Local Counsel

Secure upload

Discuss your counterfeiting claim

Send your registration numbers, test-purchase evidence, listing links, and any CBP seizure notices. If you are an accused seller, upload the letter or court papers and note the deadline.

Assessment of whether the counterfeiting remedies are available
Seizure, TRO, and asset-freeze applications
Statutory and treble damages strategy
Coordination with CBP, platforms, and local counsel

Prefer to talk first? Call or email, or message us on WhatsApp. Atendemos en español.

Sources

General information, not legal advice for your situation. Statutes, rules, and fees as of October 2026. Last reviewed October 28, 2026.