Trade Dress Watch: a case for counterfeit trade dress

By Gina Durham

Can a product that imitates the look and feel of another product, but does not use the trademarked brand name, still be considered a ‘counterfeit’ product under US law? Owners of popular brands (such as Louis Vuitton and Tiffany) are well acquainted with the counterfeiters’ practice of applying their brand name or logo to fake goods and often respond with a claim pursuant to Section 32 of the Lanham Act alleging use of a ‘counterfeit mark’.

What is less clear is whether a counterfeit claim under Section 32 will be successful if the alleged ‘counterfeit mark’ is trade dress, rather than a word mark or a well-known logo mark.

The Lanham Act defines a ‘counterfeit mark’ as ‘a counterfeit of a mark that is registered on the principal register in the US Patent and Trademark Office for such goods or services sold, offered for sale or distributed and that is in use, whether or not the person against whom relief is sought knew such mark was so registered’…

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