Metropolitan News-Enterprise


Friday, October 2, 2020


Page 3


Ninth Circuit:

‘Confusion’ Required for Trademark Counterfeiting Claim

Competitor’s Use of Trademarked Name on Rival Product Is Not Presumed to Be Confusing, Judge Lee Writes, Saying That the Products Have to Be Compared to Each Other



At left is Arcona’s “EYE DEW” and below is a product of the same nature with the same name produced by Farmacy. The Ninth U.S. Circuit Court of Appeals held yesterday that summary judgment was properly granted in Arcona’s trademark counterfeiting action because the two products, while bearing the same name, are different in appearance, so that consumer confusion is not likely. Confusion, Judge Kenneth Lee wrote, cannot be presumed based on the identical name being used.


By a MetNews Staff Writer

A claim based on counterfeiting of a trademark, like a claim for infringement, requires a showing of a likelihood of confusion on the part of consumers, the Ninth U.S. Circuit Court of Appeals held yesterday, in a case of first impression for the circuit.

Judge Kenneth K. Lee wrote for a three-judge panel in declaring that the holding is dictated by the plain language of 15 U.S.C. §1114, a provision of the Lanham Act. He wrote (with emphasis added by him):

“Here, 15 U.S.C. § 1114 establishes the cause of action for, among other things, counterfeiting and states that ‘[a]ny person who...use[s] in commerce any reproduction, counterfeit copy, or colorable imitation of a registered mark ...which such use is likely to cause confusion, or to cause mistake, or to deceive...shall be liable in a civil action by the registrant for the remedies hereinafter provided.’…The plain language of the statute thus shows that ‘likely to cause confusion’ is a requirement for a counterfeiting claim.”

Same Name

Confusion, he said, will not be presumed from the use of the same name used for a competing product.

The opinion affirms a summary judgment granted by District Court Judge Otis D. Wright II of the Central District of California in favor of Farmacy Beauty, LLC, which manufactures a skin care product it calls “EYE DEW.” It was sued by Arcona, Inc. which has registered “EYE DEW” as a trademark.

Lee wrote:

“It appears that our court has not yet expressly held that a counterfeiting claim requires a likelihood of confusion. That said, Section 1114 addresses both trademark infringement and counterfeit claims, and we have repeatedly held that the plain language of Section 1114 requires a likelihood of confusion for a trademark infringement claim….But we have not directly addressed it in the context of a counterfeit claim, perhaps because consumer confusion is generally not in dispute in most counterfeit cases….For example, the use of a counterfeit Louis Vuitton trademark on a handbag is obviously intended to confuse consumers.”

Inevitable Confusion

Arcona claimed that because Farmacy used the words “Eye Dew” for its competing eye cream, consumers would necessarily confuse it with Arcona’s product.

“This court has never adopted the rigid approach advanced by Arcona,” Lee responded.

The two products simply do not look alike, he pointed out, commenting:

“A court should not myopically focus on only the alleged counterfeit marks to the exclusion of the entire product or even common sense. Here, while the products do compete in the same space and same geographic area, there are significant differences between the two products….”

The jurist noted there was no evidence that Farmacy, in adopting the name “Eye Dew,” was aware of Arcona’s existing use of those words.

The case is Arcona v. Farmacy Beauty, 19-55586.


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