Second Circuit requires confusion for counterfeiting

Hamilton International Ltd. v. Vortic LLC, No. 20-3369-cv
(2d Cir. Sept. 14, 2021)

A small note about this case affirming a finding that
vintage Hamilton pocketwatch movements converted to wristwatches were not
likely to cause confusion under Champion and Polaroid: While it’s
not really a great leap forward for refurbished goods—at most, the Second
Circuit refused to take further bites out of the doctrine, and its emphasis on
consumer sophistication may even make things harder for Etsy jewelry makers—it
may be less noticeable that the court appears to have joined the
Ninth Circuit
in requiring likely confusion before counterfeiting can be

The court of appeals found that the district court’s “analysis
of Hamilton’s trademark infringement claim under the Lanham Act necessarily
compelled judgment in favor of Vortic and Custer on Hamilton’s remaining
claims. This is because each of those claims required some showing of a
likelihood of consumer confusion. See 15 U.S.C. § 1114(1)(a) (federal
counterfeiting claim requiring the plaintiff to show that the use of the
counterfeit mark is “likely to cause confusion, or to cause mistake, or to
deceive”) ….” [Side note: A little weird to say that state law blurring claims
fail for want of confusion, but I’ll take it—the court says that state dilution
factors “resembl[e] the Polaroid factors and similarly focus[] on confusion.”
Dilution: what is it good for? Absolutely nothing!]

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