Ninth Cir. Says Chance of Confusion Necessary for Counterfeiting

In a legal fight over the use of the name “Eye Dew” on cosmetics, the Ninth Circuit affirmed Thursday that trademark counterfeiting claims require a likelihood of consumer confusion to succeed.

The U.S. Court of Appeals for the Ninth Circuit said it hadn’t addressed this specific question before, “perhaps because consumer confusion is generally not in dispute in most counterfeit cases.”

But counterfeit claims are “merely the ‘hard core’ or ‘first degree’ of trademark infringement,” the court said, and there’s nothing in the law that suggests they should be treated differently from infringement claims, which require likely confusion.

Arcona Inc.'s ...