See also Lontex Corp. v. Nike, Inc., 384 F. Supp. 3d 546, 555 (E.D. Pa. 2019) (adopting same definition of spurious).Ill. Tool Works Inc. v. J-B Weld Co., LLC, 469 F. Supp. 3d 4, 10 (D. Conn. 2020) (quoting Fujifilm N. Am. Corp. v. PLR IP Holdings, LLC, No. 17 CIV. 8796 (NRB), 2019 WL 274967, at *3 (S.D.N.Y. Jan. 7, 2019)). Here, the evidence simply does not demonstrate that Vintage Brand's alleged use of the Penn State Marks is likely to cause confusion as to the origin of the goods sold by Vintage Brand.
Tool Works Inc. v. J-B Weld Co., LLC, 469 F.Supp.3d 4, 9 (D. Conn. 2020) (third alteration in original) (emphasis omitted) (quoting Gucci Am., Inc. v. Guess?, Inc., 868 F.Supp.2d 207, 242 (S.D.N.Y. 2012)); see also Fujifilm N. Am. Corp. v. PLR IP Holdings, LLC, No. 17-CV-8796, 2019 WL 274967, at *3 (S.D.N.Y. Jan. 7, 2019)
To assess a claim of counterfeit, “an allegedly counterfeit mark must be compared with the registered mark as it appears on actual merchandise to an average purchaser.” Colgate-Palmolive Co. v. J.M.D. All-Star Imp. & Exp. Inc., 486 F.Supp.2d 286, 289 (S.D.N.Y. 2007); see also Montres Rolex, S.A. v. Snyder, 718 F.2d 524, 533 (2d Cir. 1983); Ill. Tool Works Inc. v. J-B Weld Co., LLC, 469 F.Supp.3d 4, 9-10 (D. Conn. 2020) (citing cases).
To assess a claim of counterfeit, “an allegedly counterfeit mark must be compared with the registered mark as it appears on actual merchandise to an average purchaser.” Colgate-Palmolive Co. v. J.M.D. All-Star Imp. & Exp. Inc., 486 F.Supp.2d 286, 289 (S.D.N.Y. 2007); see also Montres Rolex, S.A., 718 F.2d at 533; Illinois Tool Works Inc. v. J-B Weld Co., LLC, 469 F.Supp.3d 4, 9-10 (D. Conn. 2020) (citing cases).
They have found that, even if the marks themselves are nearly identical on a product, the context of the entire product featuring the mark may preclude a counterfeiting claim. Audemars Piguet Holding S.A. v. Swiss Watch Int'l, Inc., No. 12-CIV-5423-LAP, 2015 WL 150756, at *2 (S.D.N.Y. Jan. 12, 2015) (finding trademark infringement but not counterfeiting because defendants' use of the mark was not "spurious" due to product's other distinctive features); Associated Gen. Contractors of Am. v. Stokes, No. 1:11-CV-795 GBL/TRJ, 2013 WL 1155512, at *6 (E.D. Va. Mar. 19, 2013) (same); Ill. Tool Works Inc. v. J-B Weld Co., LLC, 469 F. Supp. 3d 4, 10-11 (D. Conn. 2020) (same). Unfortunately, it appears not a single court in the Fifth Circuit has addressed the argument raised by Defendants, or for that matter, the line of cases utilized by them.