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Counterfeiting: Trademark infringement on steroids

News and Notes Focused on the 3 Public Faces of IP Law

  • Brand Image Protection - Trademark Law
  • Visual Image Protection - Copyright Law
  • Personal Image Protection - Right of Publicity Law

The Image Protection Law blog has been created in order to share stories and information on the legal aspects of: 1) the marketplace reputation of a company or product captured in its trademark, 2) published or publicly-displayed artwork, photography, and any created visual design, and 3) use of a person's photograph or likeness for product promotion or other commercial purposes.

The "IP3" share at least one thing in common: Image is everything. In these posts let's look at what that means in the realm of intellectual property in the news, but let's also be prepared to explore if there's something more beyond "everything." Don't forget, the intellectual in "intellectual property" doesn't mean smart or brainy, although by nature true creators often are. The word is used to refer to any creation, i.e., a "product of the mind." While this blog will be regularly updated, you are encouraged to share your thoughts on these posts.

We often talk in this space about trademark infringement. Trademarks are protected indicators of branding that identify the sources of affiliated products.

Perhaps the most extreme kind of trademark infringement is counterfeiting. On March 19, the U.S. District Court for the Central District of California released an opinion in which the judge decided that no jury could conclude that the allegation of counterfeiting was true.

EYE DEW trademark

Arcona, Inc. v. Farmacy Beauty, LLC, was a dispute between two cosmetics companies over whether one company’s eye cream was a counterfeit of the other’s. Arcona got a registered trademark in 2012 for its skin care cream EYE DEW, which it had sold since 2002. The mark did not claim right to a specific “font, style, size, or color,” just the “standard characters.”

From 2015 through fall 2017, Farmacy sold a product also called EYE DEW, the subject of Arcona’s counterfeiting allegation.

Counterfeiting has a specific definition and is a high standard to meet

The judge explained that trademark counterfeiting under the federal Lanham Act involves a “spurious mark” identical to or “substantially indistinguishable” from a registered trademark. A counterfeiter literally tries to “trick” the consumer into believing the counterfeited product is the product associated with another’s mark — trying to pass off one as the other.

The court, citing another case and famous treatise, said that courts “consider trademark counterfeiting as the ‘hard core or first degree’” kind of infringement — “stitch-for-stitch copies.”

In holding that no reasonable jury could find that the defendant’s product was a counterfeit and that no one could be “tricked into believing” the second product was one from the plaintiff company, the court noted:

  • Differences in packaging shape and size
  • Distinct colors and “packaging schemes”
  • Different claims and descriptions of product
  • Different house marks (marks protecting the source rather than the individual product)

The case is available on Westlaw, including pictures of the products, at 2019 WL 1260625.

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