Arcona, Inc. v. Farmacy Beauty, LLC

Summary

The Ninth Circuit held that a trademark counterfeiting claim under the Lanham Act (15 U.S.C. § 1114) requires a showing of likelihood of confusion, rejecting the argument that counterfeiting lacks this element. The court affirmed summary judgment for the defendant because the parties' "EYE DEW" skincare products, when viewed as a whole, had dissimilar packaging, housemarks, and designs, creating no genuine dispute of material fact on consumer confusion. The court declined to presume confusion because the products were not identical, and it properly considered the entire product rather than focusing solely on the identical mark.

Holdings

1. The plain language of 15 U.S.C. § 1114(1)(a) requires a likelihood of confusion for a trademark counterfeiting claim.
2. Summary judgment was proper because there is no genuine dispute of material fact about the likelihood of consumer confusion. The court properly compared the products as a whole, including packaging, shape, colors, and housemarks, rather than limiting analysis to the identical marks.

Questions Presented

1. Whether a trademark counterfeiting claim under the Lanham Act requires a likelihood of confusion.
2. Whether the district court properly granted summary judgment on the counterfeiting claim by comparing the products as a whole rather than focusing solely on the identical marks.

Disposition

affirmed