Sometimes clients ask if they can get a trademark infringer thrown in jail.
Wouldn’t that be awesome?
However, jail is not usually one of the things a trademark lawyer can deliver. Trademark infringement is mainly a civil wrong, meaning that a trademark owner is limited to civil remedies like an injunction, damages, the profits the infringer wrongly obtained through its infringement, and, sometimes, attorney’s fees.
Trademark statutes also provide that some egregious forms of trademark infringement, like counterfeiting, also constitute criminal acts. However, whether to prosecute such offenses is up to the prosecutor. It’s not up to the aggrieved trademark owner, and it’s not included as part of a civil lawsuit.
Sadly, prosecutions are rare. Unsurprisingly, resources are thin, and prosecutors usually have bigger fish to fry (such as prosecuting murderers and bank robbers).
To increase the chances a prosecutor will exercise her discretion and file criminal charges, I’d suggest making her job as easy as possible. Do your own investigation, collect all of the evidence needed to prove the case, and deliver it to the prosecutor wrapped in a bow. Even then, the chances of getting the offending counterfeiter thrown in jail are pretty slim.
That’s not to say that trademark owners should despair. Though jail isn’t likely, they can still maximize civil remedies to stop the infringement and put themselves in the position they would have been in had the infringement never occurred. That’s usually where trademark owners should devote their resources.