United States v. Petrosian
126 F.3d 1232 (1997)
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Rule of Law:
Using a genuine trademark on packaging that contains a non-genuine product constitutes the use of a "counterfeit mark" under 18 U.S.C. § 2320. A genuine mark becomes "spurious," and therefore counterfeit, when it is used to falsely indicate the source or identity of the goods.
Facts:
- Vatchagan Petrosian and two associates purchased genuine Coca-Cola bottles which bore the registered Coca-Cola trademark.
- They filled these genuine bottles with a cola-like carbonated beverage that was not manufactured by the Coca-Cola Company.
- Petrosian and his associates then offered these products for sale.
- They represented to purchasers that the beverage inside the bottles was genuine Coca-Cola.
Procedural Posture:
- The United States charged Vatchagan Petrosian in federal district court with counterfeit trafficking, mail fraud, and conspiracy.
- At trial, the district court instructed the jury that a 'counterfeit mark' includes genuine trademarks affixed to packaging containing products not made by the trademark owner.
- A jury found Petrosian guilty of the charged offenses.
- Petrosian (as appellant) appealed his convictions to the United States Court of Appeals for the Ninth Circuit, arguing that the district court's jury instruction was an incorrect statement of the law.
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Issue:
Does using a genuine trademark on packaging containing a non-genuine product constitute the use of a 'counterfeit mark' in violation of 18 U.S.C. § 2320(a)?
Opinions:
Majority - Per Curiam
Yes. Using a genuine trademark on a non-genuine product constitutes the use of a 'counterfeit mark' because the mark becomes spurious when used to misrepresent the product's origin or identity. The court reasoned that under the statute, a 'counterfeit mark' is defined as a 'spurious mark.' 'Spurious' means false or inauthentic. A genuine Coca-Cola mark becomes spurious when affixed to a counterfeit product because it falsely indicates that Coca-Cola is the source of the beverage and falsely identifies the beverage as Coca-Cola. This use is also likely to cause confusion, satisfying another element of the statute. The court found this interpretation consistent with congressional intent to curb trafficking of all counterfeit goods and with civil liability cases under the Lanham Act, which has a nearly identical definition of 'counterfeit mark'.
Analysis:
This decision solidifies the scope of criminal liability for trademark counterfeiting, closing a potential loophole for defendants who use authentic packaging or labels for inauthentic products. By focusing on the misrepresentation of the product's source and identity, the court affirmed that the authenticity of the goods themselves, not just the mark in isolation, is what trademark law protects. This ruling prevents a 'bait-and-switch' defense and strengthens protections for both trademark holders and consumers by treating the misuse of a genuine mark on a fake product as equivalent to using a fake mark altogether.
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