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U.S. Code as of:
01/19/04
Section 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 (!1)
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.
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