Counterfeit Products: A Brand Owner's Remedies in California
Last updated: November 2026
A counterfeit is a spurious mark identical to, or substantially indistinguishable from, a registered mark. (15 U.S.C. § 1127.) In a counterfeit products lawsuit, a California brand owner can obtain an ex parte seizure order, an injunction, and destruction of the goods. Intentional counterfeiting is trebled absent extenuating circumstances, or the owner may elect statutory damages of up to $2,000,000 per mark per type of goods if willful. (15 U.S.C. §§ 1116(d), 1117(b), (c).) Kolmogorov Law, P.C. pursues these civil remedies for Orange County and Los Angeles brand owners.
Call (909) 235-6116 or contact us online if fakes of your product are being sold in California.
Trademark counterfeiting versus ordinary infringement
Ordinary infringement is a similar mark that is likely to confuse. Counterfeiting is a copy. The Lanham Act defines a counterfeit as a spurious mark identical with, or substantially indistinguishable from, a registered mark. (15 U.S.C. § 1127.) The seizure and enhanced damages provisions apply only to counterfeits of marks registered on the principal register and in use. (15 U.S.C. § 1116(d)(1)(B).) An unregistered brand has infringement claims; it does not have counterfeiting remedies.
The statute also excludes goods made by a manufacturer that was authorized to use the mark when the goods were produced. (15 U.S.C. § 1116(d)(1)(B).) Overruns and gray market goods raise different claims, not counterfeiting.
How brand owners find out
A customer emails a photo of a product that failed, with packaging the brand never printed. A sales representative walks a swap meet in Los Angeles and finds the client's logo on goods at a third of the price. A marketplace listing uses the brand's own photographs but ships from a seller the brand has never heard of. Each pattern starts the same way: buy samples, document the purchase, and keep the chain of custody.
The ex parte seizure order against counterfeits
The counterfeiting statute's distinctive tool is an order, issued without notice to the defendant, authorizing seizure of the goods, the counterfeit marks, the means of making them, and the records of their manufacture and sale. (15 U.S.C. § 1116(d)(1)(A).) The requirements are strict. The applicant must give reasonable notice to the United States Attorney, support the application with an affidavit or verified complaint, and post security adequate to cover damages for a wrongful seizure. (15 U.S.C. § 1116(d)(2), (3), (4)(A).) The court must then find, from specific facts, each of the following. (15 U.S.C. § 1116(d)(4)(B).)
- An ordinary order would not be adequate.
- The applicant has not publicized the request.
- The applicant is likely to prove use of a counterfeit mark.
- Immediate and irreparable injury will occur without the seizure.
- The goods are at the place identified in the application.
- The harm of denying the order outweighs the harm of granting it.
- The defendant would destroy, move, or hide the goods if given notice.
The order must set a seizure period ending within seven days. (15 U.S.C. § 1116(d)(5).) The court must hold a hearing between ten and fifteen days after issuance, absent good cause or consent to another date, and there the applicant bears the burden of showing the findings still hold. (15 U.S.C. § 1116(d)(10)(A).) A wrongful seizure gives the target a claim for lost profits, goodwill, and attorney fees, and punitive damages if the seizure was sought in bad faith. (15 U.S.C. § 1116(d)(11).) We seek these orders only when the evidence of counterfeiting is clear and the risk of the goods disappearing is real. Where it is not, a TRO or preliminary injunction on notice does the job.
Damages for counterfeiting
For intentional use of a mark the defendant knew was counterfeit, the court must award three times the defendant's profits or the plaintiff's damages, whichever is greater, plus a reasonable attorney fee, unless it finds extenuating circumstances. (15 U.S.C. § 1117(b).) At any time before final judgment, the plaintiff may elect statutory damages of $1,000 to $200,000 per counterfeit mark per type of goods sold, and up to $2,000,000 per mark per type if the use was willful. (15 U.S.C. § 1117(c).) Our damages and remedies page covers the choice.
California's counterfeiting remedies
For a mark registered with the California Secretary of State, the owner may sue to enjoin the manufacture, use, display, or sale of counterfeits. The court shall require the defendant to pay up to three times its profits and up to three times the owner's damages. (Bus. & Prof. Code, § 14250, subd. (a).) If goods in the defendant's possession bear a counterfeit mark, the court shall order the destruction of the goods, labels, packaging, and the tools used to make them. (Bus. & Prof. Code, § 14250, subd. (a).)
California and federal law also make trafficking in counterfeit marks a crime. The firm pursues the civil remedy; we coordinate with law enforcement where a client's evidence supports a referral.
Reaching the supply chain
Counterfeiters are often judgment-proof. The businesses around them are not. Under California's statute, a person who knowingly facilitates, enables, or assists the manufacture, distribution, or sale of goods bearing a counterfeit or imitation of a California-registered mark is liable to the owner. Knowledge is presumed once a written demand with the certificate and a sworn statement has been delivered. (Bus. & Prof. Code, § 14245, subd. (a)(3).) The same provision reaches a landlord or property owner who controlled the premises and knew or had reason to know of the activity. (Bus. & Prof. Code, § 14245, subd. (a)(5).) A properly served cease and desist letter to the landlord, the freight forwarder, or the marketplace is therefore a litigation step, not just a courtesy. Online sellers are addressed on our marketplace complaints page.
Where these cases are heard
Counterfeiting cases under the Lanham Act are filed in federal court, for Orange County at the Ronald Reagan Federal Building in Santa Ana and for Los Angeles at the First Street Courthouse. State claims under the Model State Trademark Law can be joined or filed in the Superior Court.
What to bring to the first meeting
Your registration certificates, with the goods listed. The samples you bought, with receipts, packaging, and photographs. The listing or location where you bought them. A genuine product for comparison. And your sales figures for the affected product, which drive the damages election.
Frequently asked questions
What is the difference between counterfeiting and trademark infringement?
Infringement is use of a mark similar enough to cause confusion. Counterfeiting is use of a spurious mark identical to or substantially indistinguishable from a registered mark. (15 U.S.C. § 1127.) Counterfeiting unlocks ex parte seizure, mandatory trebling, and statutory damages, which ordinary infringement does not. (15 U.S.C. §§ 1116(d), 1117(b), (c).)
Can I get a seizure order against a counterfeiter?
Yes, if your mark is registered. You must show by affidavit that an ordinary order would not work, that the goods are at a known location, and that the seller would hide or move them on notice. The statute lists further findings. You must post a bond and give notice to the United States Attorney. (15 U.S.C. § 1116(d).)
What are statutory damages for counterfeit goods?
A plaintiff may elect, before final judgment, $1,000 to $200,000 per counterfeit mark per type of goods, or up to $2,000,000 per mark per type if the counterfeiting was willful, instead of proving actual damages and profits. (15 U.S.C. § 1117(c).) The court sets the amount it considers just within the range.
Can I sue the landlord or marketplace where counterfeits are sold?
Under California's trademark statute, yes, for a state-registered mark, if they knowingly facilitated the sales, and knowledge is presumed after a written demand with your registration certificate and a sworn statement is delivered in the manner the statute requires. (Bus. & Prof. Code, § 14245, subd. (a)(3), (5).) Federal contributory liability requires a similar showing of knowledge.
Talk to a California trademark litigation attorney
If counterfeits of your product are on the market, call (909) 235-6116 or contact us online. Kolmogorov Law, P.C. is at 327 Magnet, Irvine, CA 92618, and represents brand owners in Orange County, Los Angeles, and throughout California. See also our IP litigation page.
This page provides general information about federal and California trademark law and is not legal advice. Outcomes depend on the registration, the evidence of counterfeiting, and the court.