Arcona, Inc. v. Farmacy Beauty, LLC, et al.

The Lanham Act defines “counterfeit” as “a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.” (15 U.S.C. § 1127.) “The key question presented,” as the Ninth Circuit succinctly framed it below, “is whether a trademark counterfeiting claim requires a likelihood of confusion.” App. 2. The Ninth Circuit concluded, “[w]e hold that the plain language of the statute requires a likelihood of confusion for a counterfeit claim.” (Id.) The questions presented are as follows:

1. Whether trademark counterfeiting occurs when the identical trademark recited in the federal trademark registration is used on the identical type of goods recited in the federal trademark registration in spite of the counterfeiting’s attempt to avoid liability by changing the appearance of the packaging.

2. Whether the Supreme Court should resolve the split in the circuits that was created when the Ninth Circuit in this case rejected the presumption of counterfeiting when a counterfeiter uses the identical trademark recited in the federal trademark registration on the identical type of goods recited in the federal trademark registration.

3. When the statutory requirements for counterfeiting of a registered word mark