§ 1116. — Injunctive relief.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 15USC1116]
TITLE 15--COMMERCE AND TRADE
CHAPTER 22--TRADEMARKS
SUBCHAPTER III--GENERAL PROVISIONS
Sec. 1116. Injunctive relief
(a) Jurisdiction; service
The several courts vested with jurisdiction of civil actions arising
under this chapter shall have power to grant injunctions, according to
the principles of equity and upon such terms as the court may deem
reasonable, to prevent the violation of any right of the registrant of a
mark registered in the Patent and Trademark Office or to prevent a
violation under subsection (a), (c), or (d) of section 1125 of this
title. Any such injunction may include a provision directing the
defendant to file with the court and serve on the plaintiff within
thirty days after the service on the defendant of such injunction, or
such extended period as the court may direct, a report in writing under
oath setting forth in detail the manner and form in which the defendant
has complied with the injunction. Any such injunction granted upon
hearing, after notice to the defendant, by any district court of the
United States, may be served on the parties against whom such injunction
is granted anywhere in the United States where they may be found, and
shall be operative and may be enforced by proceedings to punish for
contempt, or otherwise, by the court by which such injunction was
granted, or by any other United States district court in whose
jurisdiction the defendant may be found.
(b) Transfer of certified copies of court papers
The said courts shall have jurisdiction to enforce said injunction,
as provided in this chapter, as fully as if the injunction had been
granted by the district court in which it is sought to be enforced. The
clerk of the court or judge granting the injunction shall, when required
to do so by the court before which application to enforce said
injunction is made, transfer without delay to said court a certified
copy of all papers on file in his office upon which said injunction was
granted.
(c) Notice to Director
It shall be the duty of the clerks of such courts within one month
after the filing of any action, suit, or proceeding involving a mark
registered under the provisions of this chapter to give notice thereof
in writing to the Director setting forth in order so far as known the
names and addresses of the litigants and the designating number or
numbers of the registration or registrations upon which the action,
suit, or proceeding has been brought, and in the event any other
registration be subsequently included in the action, suit, or proceeding
by amendment, answer, or other pleading, the clerk shall give like
notice thereof to the Director, and within one month after the judgment
is entered or an appeal is taken the clerk of the court shall give
notice thereof to the Director, and it shall be the duty of the Director
on receipt of such notice forthwith to endorse the same upon the file
wrapper of the said registration or registrations and to incorporate the
same as a part of the contents of said file wrapper.
(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 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--
(i) an order other than an ex parte seizure order is not
adequate to achieve the purposes of section 1114 of this title;
(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. The court shall enter an appropriate
protective order with respect to discovery by the applicant of any
records that have been seized. The protective order shall provide for
appropriate procedures to assure that confidential information contained
in such records is not improperly disclosed to the applicant.
(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, Sec. 34, 60 Stat. 439; Pub. L. 93-596,
Sec. 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 98-473, title II,
Sec. 1503(1), Oct. 12, 1984, 98 Stat. 2179; Pub. L. 100-667, title I,
Sec. 128(c)-(e), Nov. 16, 1988, 102 Stat. 3945; Pub. L. 104-153, Sec. 6,
July 2, 1996, 110 Stat. 1388; Pub. L. 106-43, Sec. 3(a)(1), Aug. 5,
1999, 113 Stat. 218; Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title
III, Sec. 3003(a)(1), title IV, Sec. 4732(b)(1)(B)], Nov. 29, 1999, 113
Stat. 1536, 1501A-548, 1501A-583; Pub. L. 107-273, div. C, title III,
Sec. 13207(b)(8)-(10), Nov. 2, 2002, 116 Stat. 1908.)
References in Text
The Rules of Civil Procedure, referred to in subsec. (d)(10)(B),
probably means the Federal Rules of Civil Procedure, which are set out
in the Appendix to Title 28, Judiciary and Judicial Procedure.
Prior Provisions
Acts Feb. 20, 1905, ch. 592, Secs. 19, 20, 33 Stat. 729; Mar. 3,
1911, ch. 231, Sec. 291, 36 Stat. 1167; June 25, 1936, ch. 804, 49 Stat.
1921.
Amendments
2002--Subsec. (d)(1)(A), (B)(ii). Pub. L. 107-273, Sec. 13207(b)(8),
(9), substituted ``section 220506 of title 36'' for ``section 110 of the
Act entitled `An Act to incorporate the United States Olympic
Association', approved September 21, 1950 (36 U.S.C. 380)''.
Subsec. (d)(11). Pub. L. 107-273, Sec. 13207(b)(10), substituted
``6621(a)(2) of title 26'' for ``6621 of title 26''.
1999--Subsec. (a). Pub. L. 106-113, Sec. 1000(a)(9) [title III,
Sec. 3003(a)(1)], substituted ``(a), (c), or (d)'' for ``(a) or (c)'' in
first sentence.
Pub. L. 106-43 substituted ``subsection (a) or (c) of section 1125
of this title'' for ``section 1125(a) of this title'' in first sentence.
Subsec. (c). Pub. L. 106-113, Sec. 1000(a)(9) [title IV,
Sec. 4732(b)(1)(B)], substituted ``Director'' for ``Commissioner''
wherever appearing.
1996--Subsec. (d)(9). Pub. L. 104-153 inserted first sentence and
struck out former first sentence which read as follows: ``The court
shall order that a United States marshal or other law enforcement
officer is to serve a copy of the order under this subsection and then
is to carry out the seizure under such order.''
1988--Subsec. (a). Pub. L. 100-667, Sec. 128(c), inserted ``or to
prevent a violation under section 1125(a) of this title'' after
``Office'' in first sentence.
Subsec. (c). Pub. L. 100-667, Sec. 128(d), substituted ``proceeding
involving a mark registered'' for ``proceeding arising'' and ``judgment
is entered or an appeal is taken'' for ``decision is rendered, appeal
taken or a decree issued''.
Subsec. (d)(1)(B). Pub. L. 100-667, Sec. 128(e), inserted ``on or''
after ``or designation used'' in concluding provisions.
1984--Pub. L. 98-473 designated first, second, and third
undesignated pars. as subsecs. (a), (b), and (c), respectively and added
subsec. (d).
1975--Pub. L. 93-596 substituted ``Patent and Trademark Office'' for
``Patent Office''.
Effective Date of 1999 Amendment
Amendment by section 1000(a)(9) [title III, Sec. 3003(a)(1)] of Pub.
L. 106-113 applicable to all domain names registered before, on, or
after Nov. 29, 1999, see section 1000(a)(9) [title III, Sec. 3010] of
Pub. L. 106-113, set out as a note under section 1117 of this title.
Amendment by section 1000(a)(9) [title IV, Sec. 4732(b)(1)(B)] of
Pub. L. 106-113 effective 4 months after Nov. 29, 1999, see section
1000(a)(9) [title IV, Sec. 4731] of Pub. L. 106-113, set out as a note
under section 1 of Title 35, Patents.
Effective Date of 1988 Amendment
Amendment by Pub. L. 100-667 effective one year after Nov. 16, 1988,
see section 136 of Pub. L. 100-667, set out as a note under section 1051
of this title.
Effective Date of 1975 Amendment
Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4 of
Pub. L. 93-596, set out as a note under section 1111 of this title.
Repeal and Effect on Existing Rights
Repeal of inconsistent provisions, effect of this chapter on pending
proceedings and existing registrations and rights under prior acts, see
notes set out under section 1051 of this title.
Transfer of Functions
For transfer of functions, personnel, assets, and liabilities of the
United States Customs Service of the Department of the Treasury,
including functions of the Secretary of the Treasury relating thereto,
to the Secretary of Homeland Security, and for treatment of related
references, see sections 203(1), 551(d), 552(d), and 557 of Title 6,
Domestic Security, and the Department of Homeland Security
Reorganization Plan of November 25, 2002, as modified, set out as a note
under section 542 of Title 6.
For transfer of the functions, personnel, assets, and obligations of
the United States Secret Service, including the functions of the
Secretary of the Treasury relating thereto, to the Secretary of Homeland
Security, and for treatment of related references, see sections 381,
551(d), 552(d), and 557 of Title 6, Domestic Security, and the
Department of Homeland Security Reorganization Plan of November 25,
2002, as modified, set out as a note under section 542 of Title 6.
For transfer of functions of other officers, employees, and agencies
of Department of Commerce, with certain exceptions, to Secretary of
Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950,
Secs. 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in
the Appendix to Title 5, Government Organization and Employees.
Section Referred to in Other Sections
This section is referred to in sections 1117, 1118, 1122, 1125 of
this title.
