Penal Law §165.71(2) defines “counterfeit trademark” as:

a spurious trademark or an imitation of a trademark that is (a) used in connection with trafficking in goods; and (b) used in connection with the sale, offering for sale or distribution of goods that are identical with or substantially indistinguishable from a trademark as defined in subdivision one of this section.


Relying on a series of cases,4 the court dismissed the complaint, albeit with leave to file a superseding instrument, because it did not specifically assert: (1) that the seized items bore trademarks; (2) that such trademarks were registered and in use within the meaning of the statute; and (3) that the copying trademarks were substantially similar to or indistinguishable from the registered marks. The court distinguished several cases relied on by the prosecution,5 noting that in some instances the bona fide mark was only a name, so little more description was required.

Use, Registration Issues

Without regard to the result for Mr. Jobe, the decision points up two important aspects in which the New York criminal anticounterfeiting statute has fallen out of step with federal law. When the Penal Law originally was adopted in 1992, it tracked the definition laid out in 15 U.S.C. §2320.6 While that language can still be found in one provision of the federal statute dealing with injunctive relief,7 the current definitional section, 15 U.S.C. §1127, differs significantly from the New York statute as it stands.8 Thus, trademark is defined as follows:

The term “trademark” includes any word, name, symbol, or device, or any combination thereof -

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, . . . . (Emphasis supplied.)

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