Arcona, Inc. v. Farmacy Beauty, LLC
976 F.3d 1074
9th Cir.2020Background
- Arcona, Inc. owns a registered trademark for the term “EYE DEW” used on its eye cream sold in a tall silver bottle and slim cardboard box.
- Farmacy Beauty independently developed an eye cream also labeled “EYE DEW,” sold in a short white jar with distinct graphics and its own housemark; Farmacy began sales in Sephora in 2015.
- Arcona sent a cease-and-desist in 2016; parties failed to resolve the dispute and Arcona sued in 2017 asserting counterfeiting and related Lanham Act and state unfair-competition claims.
- The district court granted summary judgment to Farmacy on Arcona’s trademark counterfeiting claim, concluding a reasonable consumer would not be confused given substantial differences in packaging, housemarks, and overall product appearance.
- Arcona appealed, arguing (1) a counterfeiting claim need not show likelihood of confusion and (2) identical marks (EYE DEW) warrant a presumption of confusion; the Ninth Circuit reviewed de novo.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether a trademark counterfeiting claim under the Lanham Act requires proof of likelihood of confusion | Arcona: Counterfeiting claims do not require a likelihood-of-confusion showing; remedies provisions for counterfeiting omit the phrase | Farmacy: §1114’s text requires that use be “likely to cause confusion,” so counterfeiting requires likelihood of confusion | Court: §1114’s plain language and precedent require a showing of likelihood of confusion for counterfeiting claims |
| Whether identical use of the literal term “EYE DEW” creates a presumption of confusion | Arcona: Identical marks support a presumption of confusion without examining other product features | Farmacy: Even identical words do not automatically create a presumption if products/packaging differ | Court: No presumption here; presumption only applies where marks and goods are essentially identical—court must consider the product as a whole |
| Whether the district court erred by comparing whole products rather than focusing only on the identical mark | Arcona: Court should have limited analysis to the identical mark itself | Farmacy: Marketplace appearance and housemarks are relevant; full-product comparison is appropriate | Court: Affirmed full-product comparison; marketplace context and packaging differences are proper factors |
| Whether a genuine dispute of material fact exists about likelihood of confusion | Arcona: Differences do not preclude a jury finding confusion; intent and strength of mark disputed | Farmacy: Packaging, housemarks, third-party usage, and evidence of lack of intent show no reasonable likelihood of confusion | Court: No genuine dispute—no reasonable juror could find likely confusion; summary judgment for Farmacy affirmed |
Key Cases Cited
- Consumer Prod. Safety Comm’n v. GTE Sylvania, 447 U.S. 102 (Sup. Ct. 1980) (statutory interpretation begins with text).
- Sturgeon v. Frost, 136 S. Ct. 1061 (Sup. Ct. 2016) (statutory words read in context).
- Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d 426 (9th Cir. 2017) (§1114 requires likelihood of confusion for infringement claims).
- Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (identical marks on identical goods can be case-dispositive; marketplace context matters).
- Idaho Potato Comm’n v. G & T Terminal Packaging, Inc., 425 F.3d 708 (9th Cir. 2005) (treble damages for counterfeiting require likelihood of confusion).
- Springboards to Educ., Inc. v. Houston Indep. Sch. Dist., 912 F.3d 805 (5th Cir. 2019) (likelihood of confusion is an element of counterfeiting).
- Kelly-Brown v. Winfrey, 717 F.3d 295 (2d Cir. 2013) (dismissing counterfeiting claim where no likelihood of confusion).