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76 J. Pat. & Trademark Off. Soc'y 933 (1994)
Criminal (and Civil) Trademark Infringement: What Statute of Limitations Applies

handle is hein.journals/jpatos76 and id is 947 raw text is: Criminal (and Civil) Trademark
Infringement: What Statute of
Limitations Applies?
Ronald J. Nessimt
A lthough statute of limitation questions are often yawners, a recent
federal criminal case in the Central District of California raised
the interesting and case dispositive issue of what limitations period
applies in a federal criminal trademark infringement action.2 While that
question may appear at first glance to be one of not great interest, and
then to only white collar criminal defense lawyers, the search for an
answer also addresses the broader unsettled question of what limitations
period applies in a federal civil trademark infringement action under
the Lanham Act3 and, even more importantly, illustrates the approach
federal courts should use when determining the appropriate limitations
period where a federal statute fails to expressly provide one.
THE UNDERLYING CASE
The defendants, an individual and his wholly-owned corporation,
were secondary dealers of circuit breakers who sold used and recon-
ditioned breakers to both middlemen and end users. It was undisputed
that the defendants often replaced the original manufacturer's label on
the breakers, which label contained the manufacturer's trademark, with
a photocopy of the original label. The defendants contended that their
purpose was only to accurately identify essential electrical character-
istics of the breakers being sold. The government contended that the
defendants used the replacement labels as part of a scheme to pass used
0 1994 Ronald J. Nessim
1 Ronald J. Nessim is a member of the Los Angeles law firm of Bird, Marella, Boxer, Wolpert
& Matz, P.C. where he has a white collar criminal defense and civil business litigation practice.
He represented both defendants in the criminal trial discussed in this article.
2 United States v. HLC Electric Supply Co., Inc. and Hector Luis Contreras, CR 92-412.
3 The Lanham Act, under which federal trademark infringement claims are brought, is set forth
in 15 U.S.C. § 1051 et seq.

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