Trademark CounterfeitingRequirements for a
In order to show that a trademark used by the defendant was a
"counterfeit mark" the government must prove the following:|
The issue of likelihood of confusion, mistake, or deception, is a
question of fact for the jury. United States v. Gonzalez, 630 F.
Supp. 894, 896 (S.D. Fla 1986). In criminal cases, however, which will
involve goods and marks which are identical to or substantially
indistinguishable from each other, the factual determination is less
complex than it might be in a civil case. Where counterfeit goods are
involved, the trier of fact may resolve the issue by a side-by-side
comparison of the two products, or through expert testimony and the
inability of a defense witness to distinguish the counterfeit item.
See, e.g., United States v. Yamin, 868 F.2d 130 (5th
Cir.), cert. denied, 492 U.S. 924 (1989); Rolex Watch
USA, Inc. v. Canner, 645 F. Supp. 484, 489 (S.D. Fla. 1986).
- The mark is spurious. 18 U.S.C. § 2320(d)(1)(a). A mark is
"spurious" if it is "not genuine or authentic." Joint Statement on
Trademark Counterfeiting Legislation, 130 Cong. Rec. H12076, H12078
(daily ed. Oct. 10, 1984)(hereinafter "Joint Statement").
- The mark was used in connection with trafficking in goods or
services. 18 U.S.C. § 2320(d)(1)(A)(i).
- The mark is "identical with, or substantially indistinguishable
from" the genuine trademark. 18 U.S.C. § 2320 (d)(1)(a)(ii). This
element assures that not every case of trademark infringement amounts to
trademark counterfeiting. The "indistinguishable from" standard is to be
interpreted on a case-by-case basis. Joint Statement, 130 Cong. Rec
H12078.|C906 The phrase is intended to prevent a counterfeiter from
escaping liability by modifying a protected trademark in trivial ways,
while excluding arguable cases of trademark infringement involving
trademarks which are merely "reminiscent of" protected trademarks.
Id. The Act does not extend to imitations or "trade dress," such
as the color, shape, or design of packaging, unless those features have
been registered as trademarks. Id. at H12079.
- The genuine mark is registered on the principal register in the
United States Patent and Trademark Office. 18 U.S.C. §
2320(d)(1)(A)(ii). This element limits the class of trademarks covered
by the statute. It also establishes the basis for federal jurisdiction
under the Commerce Clause, since use in commerce is a requirement for
registration. See 15 U.S.C. § § 1051, 1057.
on the principal register is prima facie evidence that the mark has been
in interstate commerce prior to registration. Maternally Yours, Inc.
v. Your Maternity Shop, Inc., 234 F.2d 538 (2d Cir. 1956); 15 U.S.C.
§ 1057(b). It is not necessary to prove that the defendant knew the
mark was registered. See 18 U.S.C. § 2320(d)(1)(A)(ii).
- The genuine mark is in use. The genuine mark must not only be
registered, it must also be in use. 18 U.S.C. § 2320(d)(1)(A)(ii).
- The goods or services are those for which the genuine mark is
registered. 18 U.S.C. § 2320(d)(1)(A)(ii). The definition of
counterfeit mark extends only to imitations of registered marks which
are used in connection with the goods or services for which the mark is
registered. See 18 U.S.C. § 2320(d)(1)(A)(ii). For example, a
mark used in connection with typewriter paper which is identical to or
substantially indistinguishable from a mark registered only for use on
typewriters would not be a counterfeit mark, although civil remedies
might be available under the Lanham Act. See Joint Statement, 130 Cong. Rec H12079.
- The use of counterfeit mark is "likely to cause confusion, to cause
the mistake, or to deceive." 18 U.S.C. § 2320(d)(1)(iii). The phrase
"use of which is likely to cause confusion, to cause mistake, or to
deceive" is taken from the remedial section of the Lanham Act. Joint Statement, 130 Cong. Rec. H12079. This
element is the essence of a trademark infringement.
Courts in criminal cases have adopted factors used in the civil
context when analyzing whether there exists a likelihood of confusion.
United States v. McEvoy, 820 F.2d 1170, 1172 (11th Cir.),
cert. denied, 484 U.S. 902 (1987); United States v.
Torkington, 812 F.2d 1347, 1354 (11th Cir. 1987). Factors may
include the type of trademark, the similarity of design, the similarity
of product, identity of retailers and purchasers, the defendant's
intent, and any actual confusion. These factors may be argued to a jury
in a criminal case. McEvoy, 820 F.2d at 1172.
The statute does not require a showing that direct purchasers would
be confused, mistaken, or deceived. It is sufficient that there is a
likelihood of confusion, mistake, or deception to any member of the
buying public, even a person who sees the product after its purchase.
United States v. Gantos, 817 F.2d 41, 43 (8th Cir.), cert.
denied, 484 U.S. 860 (1987); United States v. Torkington, 812
F.2d at 1352; United States v. Infurnari, 647 F. Supp. 57, 59-60
(W.D.N.Y 1986). Because likelihood of confusion, mistake, or deception
applies to members of the general purchasing public and not just to the
immediate purchaser, this factor may be present even where the defendant
told the immediate purchaser the item was not genuine, Gantos,
817 F.2d at 43; Infurnari, 647 F. Supp. at 59, or where the sale
of counterfeit goods for a fraction of the price of expensive
trademarked goods might alert a prospective purchaser that the item was
not genuine. See Torkington, 812 F.2d at 1350 (replica
Rolex watches sold for $27). See also United
States v. Hon, 904 F.2d 803, 806-08 (2d Cir. 1990), cert.
denied, 498 U.S. 1069 (1991).
[cited in Criminal Resource Manual 1714; USAM 9-68.100]