FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

ARCONA, INC., a California 

corporation,

Plaintiff-Appellant,

v.

FARMACY BEAUTY, LLC, a New 

Jersey limited liability company; 

DAVID C. CHUNG, an individual; 

MARK VEEDER, an individual,

Defendants-Appellees.

No. 19-55586

D.C. No.

2:17-cv-07058-

ODW-JPR

OPINION

Appeal from the United States District Court

for the Central District of California

Otis D. Wright II, District Judge, Presiding

Argued and Submitted June 5, 2020

Pasadena, California

Filed October 1, 2020

Before: Kenneth K. Lee and Patrick J. Bumatay, Circuit 

Judges, and Donald W. Molloy,* District Judge.

Opinion by Judge Lee

* The Honorable Donald W. Molloy, United States District Judge 

for the District of Montana, sitting by designation.
2 ARCONA V. FARMACY BEAUTY

SUMMARY**

Trademark

The panel affirmed the district court’s grant of summary 

judgment in favor of Farmacy Beauty, LLC, in a trademark 

counterfeiting action brought by Arcona, Inc.

Arcona alleged counterfeiting based on Farmacy’s use of 

the trademarked term “EYE DEW” on its skincare products. 

The district court granted summary judgment on the ground 

that a reasonable consumer would not confuse Farmacy’s 

skincare product with Arcona’s because their respective 

packaging featured different shapes, design schemes, text, 

and colors.

Agreeing with other circuits, the panel held that the plain 

language of the Lanham Act, 15 U.S.C. § 1114, requires a 

likelihood of confusion for a trademark counterfeiting claim. 

The panel declined to presume confusion because the 

products were not identical. The panel held that summary 

judgment was proper because there was no genuine dispute 

of material fact about the likelihood of consumer confusion, 

and the district court properly compared the products as a 

whole, rather than limiting analysis to the identical EYE 

DEW marks.

** This summary constitutes no part of the opinion of the court. It 

has been prepared by court staff for the convenience of the reader.
ARCONA V. FARMACY BEAUTY 3

COUNSEL

R. Joseph Trojan (argued), Dylan C. Dang, and Francis Z. 

Wong, Trojan Law Offices, Beverly Hills, California, for 

Plaintiff-Appellant.

Colin Fraser (argued), Greenberg Traurig LLP, Irvine, 

California; Jeffrey K. Joyner, Greenberg Traurig LLP, Los 

Angeles, California; for Defendants-Appellees.

OPINION

LEE, Circuit Judge:

Arcona, Inc. sued Farmacy Beauty for counterfeiting 

based on the use of the trademarked term “EYE DEW” on 

its skincare products. But apart from that term, these two 

companies’ beauty products look nothing like each other, as 

their respective packaging features different shapes, design 

schemes, text, and colors. The district court granted 

summary judgment for Farmacy, ruling that a reasonable 

consumer would not confuse Farmacy’s skincare product 

with Arcona’s. The key question presented is whether a 

trademark counterfeiting claim requires a likelihood of 

confusion. We hold that the plain language of the statute 

requires a likelihood of confusion for a counterfeit claim. 

We thus affirm the grant of summary judgment.

BACKGROUND

In March 2015, Plaintiff-Appellant Arcona, Inc. 

registered the trademark “EYE DEW” for its skincare 

products. The trademarked phrase “consists of standard 

characters without claim to any particular font, style, size, or 

color.” Arcona’s EYE DEW product is an eye cream in a 
4 ARCONA V. FARMACY BEAUTY

tall, cylindrical, silver bottle encased in a slim, cardboard 

outer box. The product features the phrase “EYE DEW” and 

the Arcona housemark on both its bottle and outer box. 

Arcona sells the product mainly at Nordstrom in the United 

States and at Sephora in Australia and Asia.

In 2014, Defendant-Appellee Farmacy Beauty began 

developing a line of skincare products, including an eye 

cream. Farmacy named the eye cream “EYE DEW” after a 

copywriter said that the name was likely available based on 

“an initial online search and uspto.gov trademark lookup.” 

Farmacy’s EYE DEW product (pictured below) comes in a 

short, wide, white jar, along with a squarish outer box. The 

product features the phrase “EYE DEW” and the Farmacy 

house mark on both its jar and outer box. In 2015, Farmacy 

began selling EYE DEW in the United States at Sephora.
ARCONA V. FARMACY BEAUTY 5

In August 2016, Arcona sent Farmacy a cease-and-desist 

letter informing Farmacy of its “EYE DEW” trademark and 

demanding that Farmacy stop selling its product. The record 

suggests that Farmacy had never heard of Arcona and was 

surprised to receive the letter. The parties unsuccessfully 

tried to resolve the matter.

In September 2017, Arcona sued Farmacy asserting 

claims of (1) trademark counterfeiting, (2) trademark 

infringement, (3) unfair competition under Section 43(a) of 

the Lanham Act, (4) unfair competition under California 

state law, and (5) unfair competition under California 

common law. At Arcona’s request, the district court 

dismissed with prejudice the trademark infringement and 

unfair competition claims.

The district court granted partial summary judgment for 

Farmacy on the counterfeiting claim. The court reasoned 

that the only similarity between the two products was the 

phrase “EYE DEW.” The court also found that Arcona

“present[ed] no evidence that the Farmacy house mark on 

the product, the dissimilar packaging, and the product itself 

[did] not nullify [Arcona]’s counterfeiting claim.” It further 

held that it was “implausible that a consumer viewing 

[Farmacy’s] EYE DEW product would be tricked into 

believing that product is actually one of [Arcona’s] EYE 

DEW products.”
6 ARCONA V. FARMACY BEAUTY

Arcona timely appealed. We have jurisdiction under 

28 U.S.C. § 1291.

STANDARD OF REVIEW

We review a district court’s grant of summary judgment 

de novo. Devereaux v. Abbey, 263 F.3d 1070, 1074 (9th Cir. 

2001) (en banc). The moving party is entitled to summary 

judgment upon a showing that no genuine issue of material 

fact exists and that the moving party is entitled to judgment 

as a matter of law. See Fed. R. Civ. P. 56(a). We view the 

facts and inferences drawn from the facts in the nonmovant’s 

favor. T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass’n, 

809 F.2d 626, 631–32 (9th Cir. 1987). We may affirm 

summary judgment on any grounds supported by the record. 

Gemtel Corp. v. Cmty. Redevelopment Agency, 23 F.3d 

1542, 1546 (9th Cir.1994).

ANALYSIS

I. Under the Lanham Act, Farmacy is liable for 

counterfeiting only if Farmacy’s use of Arcona’s 

mark is likely to confuse consumers.

Arcona’s complaint against Farmacy lists “Violation of 

Trademark Counterfeiting Act of 1984” as its first cause-ofaction. The Trademark Counterfeiting Act of 1984 

criminalizes the trafficking of counterfeit trademark goods. 

18 U.S.C. § 2320. The Act also amended the Lanham Act, 

15 U.S.C. §§ 1501 et seq., to create stronger remedies for 

civil cases involving a counterfeit trademark. See 15 U.S.C. 

§ 1117 (allowing for treble damages and attorneys’ fees).

Arcona argues that it need not show a likelihood of 

confusion to pursue its trademark counterfeiting claim. The 

“starting point for interpreting a statute is the language of the 
ARCONA V. FARMACY BEAUTY 7

statute itself.” Consumer Prod. Safety Comm’n v. GTE 

Sylvania, Inc., 447 U.S. 102, 108 (1980). “It is a 

fundamental canon of statutory construction that the words 

of a statute must be read in their context and with a view to 

their place in the overall statutory scheme.” Sturgeon v. 

Frost, 136 S. Ct. 1061, 1070 (2016).

Here, 15 U.S.C. § 1114 establishes the cause of action 

for, among other things, counterfeiting and states that “[a]ny 

person who . . . use[s] in commerce any reproduction, 

counterfeit, copy, or colorable imitation of a registered mark 

. . . which such use is likely to cause confusion, or to cause 

mistake, or to deceive . . . shall be liable in a civil action by 

the registrant for the remedies hereinafter provided.”

15 U.S.C. § 1114(1)(a) (emphasis added). The plain 

language of the statute thus shows that “likely to cause 

confusion” is a requirement for a counterfeiting claim.

Perhaps recognizing that the two products look little like 

each other, Arcona argues that a counterfeiting claim does 

not require a likelihood of confusion. It points to two 

statutory provisions establishing various remedies for 

counterfeiting that do not mention “likelihood of confusion.” 

First, 15 U.S.C. § 1116(d) allows ex parte relief to seize 

counterfeit goods. 15 U.S.C. § 1116.1 Although the text of 

1 15 U.S.C. § 1116(d) states in part:

“Civil Actions Arising Out of Use of Counterfeit 

Marks

(1)(A) In the case of a civil action arising under section 

1114(1)(a) of this title . . . with respect to a violation 

that consists of using a counterfeit mark in connection 

with the sale, offering for sale, or distribution of goods 

or services, the court may, upon ex parte application, 
8 ARCONA V. FARMACY BEAUTY

that subsection does not reference “confusion” in defining 

“counterfeit mark,” it refers to a civil action under “section 

1114(1)(a),” which (as noted above) establishes the cause of 

action for counterfeiting and includes a likelihood of 

confusion requirement. 15 U.S.C. § 1116(d)(1)(A). 

Second, 15 U.S.C. § 1117 authorizes statutory and treble 

damages for counterfeiting, and again refers to Section 

1114(1)(a), which includes a likelihood of confusion 

requirement. 15 U.S.C. § 1117(b).2 In short, even the two 

counterfeiting remedies provisions cited by Arcona 

underscore that a defendant is liable only if use of a 

counterfeit is “likely to cause confusion.” 15 U.S.C. 

§ 1114(1)(a).3

grant an order under subsection (a) of this section 

pursuant to this subsection providing for the seizure of 

goods and counterfeit marks . . . .” (emphasis added).

2 15 U.S.C. § 1117(b) states in part:

“Treble Damages for Use of Counterfeit Mark.

In assessing damages under subsection (a) for any 

violation of section 1114(1)(a) of this title . . . in a case 

involving use of a counterfeit mark or designation (as 

defined in section 1116(d) of this title), the court shall

. . . enter judgment for three times such profits or 

damages, whichever amount is greater, together with a 

reasonable attorney’s fee, if the violation consists of 

(1) intentionally using a mark or designation, knowing 

such mark or designation is a counterfeit mark (as 

defined in section 1116(d) of this title), in connection 

with the sale, offering for sale, or distribution of goods 

or services . . . .” (emphasis added).

3 The district court appeared to base its ruling in part on the ground 

that the “EYE DEW” mark is not even a counterfeit. Section 1127 
ARCONA V. FARMACY BEAUTY 9

It appears that our court has not yet expressly held that a 

counterfeiting claim requires a likelihood of confusion. That 

said, Section 1114 addresses both trademark infringement 

and counterfeit claims, and we have repeatedly held that the 

plain language of Section 1114 requires a likelihood of 

confusion for a trademark infringement claim. See, e.g., 

Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d 

426, 431 (9th Cir. 2017). But we have not directly addressed 

it in the context of a counterfeit claim, perhaps because 

consumer confusion is generally not in dispute in most

counterfeit cases. See, e.g., Gibson Brands, Inc. v. John 

Hornby Skewes & Co., 14-CV-00609 (DDP), 2016 WL 

7479317, at *6 (C.D. Cal. Dec. 29, 2016) (noting case law 

on counterfeit claims is “understandably thin”). For 

example, the use of a counterfeit Louis Vuitton trademark on 

a handbag is obviously intended to confuse consumers. Put 

another way, a counterfeit claim is merely “the ‘hard core’ 

or first degree’ of trademark infringement,” and there is 

nothing in the statutory language of Section 1114 that 

suggests that a counterfeit claim should be construed 

differently from an infringement claim. Id. at *5 (internal 

citation omitted).

Several of our decisions have followed the plain meaning 

of Section 1114 and have required a likelihood of confusion 

for claims under that section. For example, in Westinghouse 

defines “counterfeit” as a “a spurious mark which is identical with, or 

substantially indistinguishable from, a registered mark.” 15 U.S.C.

§ 1127. The district court appeared to construe Section 1127 to allow a 

court to look beyond the mark and examine the product as a whole in 

determining whether the “spurious mark” is “identical with, or 

substantially indistinguishable” from the registered mark. We need not 

resolve this issue because, even if the mark is a counterfeit, no reasonable 

juror would find a likelihood of consumer confusion under Section 1114. 

See infra pp. 12–14.
10 ARCONA V. FARMACY BEAUTY

Elec. Corp. v. Gen. Circuit Breaker & Elec. Supply, Inc., we 

held that Section 1114 was “intended to protect consumers 

against deceptive designations of the origin of goods, not just 

to prevent the duplication of trademark.” 106 F.3d 894, 899 

(9th Cir. 1997) (cleaned up). “Thus, the important test is 

whether the practice of the defendant is likely to cause 

confusion, not whether the defendant duplicated the 

plaintiff’s mark.” Id.; see also Levi Strauss & Co. v. Shilon, 

121 F.3d 1309, 1312 (9th Cir. 1997) (noting that a 

counterfeit product is likely to “cause confusion, or to cause 

mistake or to deceive”).

More recently, we held that “to invoke § 1117’s special 

civil monetary remedies against counterfeiting,” a plaintiff 

must establish, among other things, that the counterfeit mark 

“was likely to confuse or deceive.” Idaho Potato Comm’n 

v. G & T Terminal Packaging, Inc., 425 F.3d 708, 721 (9th 

Cir. 2005) (finding defendant’s unlicensed use of plaintiff’s 

certification mark constituted counterfeiting because it was 

likely to cause confusion). We required a likelihood of 

confusion, even though Section 1117’s civil monetary 

remedies provision does not itself explicitly mention it and 

instead refers to Section 1114, which does.

Other circuits also read the statutory provisions to 

require a likelihood of confusion for a counterfeiting claim. 

See Springboards to Educ., Inc. v. Houston Indep. Sch. Dist., 

912 F.3d 805, 818 (5th Cir. 2019) (“Likelihood of confusion 

is also an element of counterfeiting.”); Kelly-Brown v. 

Winfrey, 717 F.3d 295, 315 (2d Cir. 2013) (dismissing 

counterfeiting claim after describing the marks and 

concluding that consumers would not be confused).

We thus hold that a counterfeit claim requires a showing 

of likelihood of confusion under Section 1114.
ARCONA V. FARMACY BEAUTY 11

II. The court will not presume consumer confusion here 

because the products are not identical.

Arcona makes the alternative argument that the court 

should presume a likelihood of confusion because 

Farmacy’s “EYE DEW” statement is allegedly identical to 

Arcona’s mark. But even assuming the marks are identical, 

there may be no presumption of consumer confusion if the 

products themselves are not identical. Put another way, a 

court must review the product as a whole in determining 

whether an allegedly counterfeit product will likely cause 

confusion.

Arcona relies heavily on a trademark infringement case, 

Brookfield Communications, Inc. v. West Coast 

Entertainment Corp., which in dicta stated in “light of the 

virtual identity of marks, if they were used with identical 

products or services, likelihood of confusion would follow 

as a matter of course.” 174 F.3d 1036, 1056 (9th Cir. 1999) 

(emphasis added) (ruling that there was no presumption of 

confusion because MovieBuff software was not the same 

product service as moviebuff.com website); see also Stone 

Creek Inc., 875 F.3d at 432 (indicating “identical marks 

paired with identical goods can be case-dispositive” in a 

case involving an “exact replica” of a competitor’s logo on 

the same sofa (emphasis added)).

Here, the products at issue are not identical, as evident 

by a comparison of the Arcona and Farmacy products. So 

Brookfield’s dicta has no bearing on this case. The question 

then becomes: Is there a factual dispute about the likelihood 

of confusion so that Arcona’s counterfeiting claim can 

survive summary judgment?
12 ARCONA V. FARMACY BEAUTY

III. Summary judgment was proper because there is 

no genuine dispute of material fact about the 

likelihood of consumer confusion.

Finally, Arcona argues that the district court erred in 

comparing the products as a whole in ruling that there is no 

likelihood of consumer confusion. The district court, 

according to Arcona, should have limited its analysis to the 

identical marks (“EYE DEW”) only — without looking at 

the entire product — in assessing consumer confusion.

This court has never adopted the rigid approach 

advanced by Arcona. To the contrary, this court noted that 

even “where there is precise identity of a complainant’s and 

an alleged infringer’s mark, there may be no consumer 

confusion” if, for example, “the alleged infringer is in a 

different geographic area or in a wholly different industry.” 

Brookfield, 174 F.3d at 1055 (addressing trademark 

infringement claims and discussing cases in which 

companies or products had the same names, but there was no 

confusion because they competed in different geographic 

areas or industries). A court should not myopically focus on 

only the alleged counterfeit marks to the exclusion of the 

entire product or even common sense.4 Here, while the 

products do compete in the same space and same geographic 

area, there are significant differences between the two 

products, and the marks should be “considered in their 

entirety and as they appear in the marketplace.” Id. at 1054 

(internal quotation marks omitted).

4 There may be times the mark itself is so strong in the marketplace 

that the use of an identical mark by itself may cause consumer confusion, 

even if other aspects of the products are different. This is not such a case. 

As noted below, the mark here — “EYE DEW” — is not so strong.
ARCONA V. FARMACY BEAUTY 13

As the district court explained, no reasonable consumer 

would be confused by these two products because the 

packaging, size, color, shape, and all other attributes — other 

than the term “EYE DEW” — are not remotely similar. For 

example, Farmacy’s packaging looks distinct from Arcona’s 

because it features (i) multiple pictures of the Echinacea 

green envy plant used in the product, (ii) a picture of the 

farmers, and (iii) a description of the company.

Further, it is implausible that a consumer would be 

deceived because the products had their respective 

housemarks (“Farmacy” vs. “Arcona”) prominently on the 

packaging. Arcona does not present evidence to dispute this, 

but states in a conclusory fashion that “[c]onsumers would 

have no way of knowing” that Arcona did not sponsor 

Farmacy’s product. In trademark infringement cases, the 

“use of a housemark can reduce the likelihood of confusion.” 

AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 351 (9th Cir. 

1979), abrogated in part on other grounds by Mattel, Inc. v. 

Walking Mtn. Prods., 353 F.3d 792, 810 (9th Cir. 2003); see 

also Pignons S.A. de Mecanique de Precision v. Polaroid 

Corp., 657 F.2d 482, 487 (1st Cir. 1981) (“[O]therwise 

similar marks are not likely to be confused where used in 

conjunction with the clearly displayed name and/or logo of 

the manufacturer”).

Courts — at least in the trademark infringement context 

— have also considered a third party’s use of the mark in 

assessing likelihood of confusion. See Springboards, 

912 F.3d at 815, 817 (recognizing that third parties used 

similar and identical marks, and finding no reasonable jury 

could find a likelihood of confusion); cf. M2 Software, Inc., 

v. Madacy Entm’t, 421 F.3d 1073, 1088 (9th Cir. 2005) 

(affirming summary judgment on trademark infringement 

claim and reasoning that “[u]se of similar marks by third-
14 ARCONA V. FARMACY BEAUTY

party companies in the relevant industry weakens the mark 

at issue”). Farmacy presented evidence that other companies 

use the phrase “EYE DEW” in the beauty industry. This 

underscores that the “EYE DEW” mark is not so unique or 

strong.

Finally, there is no evidence that Farmacy’s use of the 

mark “EYE DEW” was intentional. It submitted evidence 

that the term “EYE DEW” was meant to describe its product 

and was not an intentional copying of Arcona’s trademark. 

Arcona does not dispute this evidence, but instead states 

without citation that Farmacy “cannot feign ignorance” of 

the mark because Arcona has been selling EYE DEW for 

over 18 years. Despite Arcona’s “general, conclusory 

allegations of ‘willfulness,’” it has produced no evidence 

that Farmacy intentionally copied its mark. See Pignons, 

657 F.2d at 491 (finding no evidence of intent in a trademark 

infringement case). In addition, Farmacy’s dissimilar 

packaging and rampant use of its housemark “flatly belie[s] 

any such notion.” See id.

In sum, the district court properly found that there is no 

genuine issue of material fact that Farmacy’s use of the 

“EYE DEW” mark would not likely cause consumer 

confusion.

CONCLUSION

To sustain a trademark counterfeiting claim, a plaintiff 

must show a likelihood of confusion. The two products, 

when viewed in their entirety, do not remotely resemble each 

other. The district court’s decision granting summary 

judgment for Farmacy is AFFIRMED.