
From the U.S. Code Online via GPO Access
[wais.access.gpo.gov]
[Laws in effect as of January 2, 2001]
[Document not affected by Public Laws enacted between
  January 2, 2001 and January 28, 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 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. 99-514, Sec. 2, Oct. 
22, 1986, 100 Stat. 2095; 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.)

                       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.

                          Codification

    ``Section 220506 of title 36'' substituted in subsec. (d)(1)(A), 
(B)(ii) 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)'', on authority of Pub. L. 105-225, Sec. 5(b), Aug. 12, 
1998, 112 Stat. 1499, the first section of which enacted Title 36, 
Patriotic and National Observances, Ceremonies, and Organizations.


                            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

    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.
    1986--Subsec. (d)(11). Pub. L. 99-514 substituted ``Internal Revenue 
Code of 1986'' for ``Internal Revenue Code of 1954'', which for purposes 
of codification was translated as ``title 26'' thus requiring no change 
in text.
    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 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.
