*The Trademark Counterfeiting Act (TCA) of 1984 was enacted in response to Congress recognizing the realities of counterfeiting activity and provides a statutory basis for seizure of counterfeit goods, while setting out strict guidelines and limits to use of the procedure, along with the basis of an action for wrongful seizure. The concerns with seizure dealt with the proximity of seizures to undue and potentially constitutionally violative intrusions sanctioned by the government.
In recognition of these valid concerns to undue and potentially constitutionally violative intrusions sanctioned by the government, and to provide a remedy to one who has been subjected to a wrongful seizure, the authors of the TCA of 1984 mandate that the court must find each of the following in order to issue a seizure order:
(1) an order other than ex parte seizure is not adequate to achieve the purposes of finding infringement (2) the applicant has not publicized the requested seizure (3) 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 and services (4) an immediate and irreparable injury will occur if such seizure is not ordered (5) the matter to be seized will be located at the place identified in the application (6) 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 (7) the person against whom seizure would be ordered or persons acting in concern 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.
There are specific requirements for the order as well which must set out findings of fact and conclusions of law which is required to show that the above findings were made.
Once seizure has been obtained, the court provides further protection to the party subject to seizure. The court must hold a hearing on the date set by the court, whereby the party obtaining the seizure must prove the facts supporting the seizure, or the order will be dissolved or modified.
The defendant is given a cause of action for wrongful seizure, including entitlement to recover for damages for lost profits, costs, good will and punitive damages where the seizure was sought in bad faith, and attorneys fees unless extenuating circumstances were present. The court may also award to the defendant prejudgment interest.