In order to show that a trademark used by the defendant was a "counterfeit mark" the government must prove the following:
- 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. Registration 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.
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).
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).