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Abstract

This Note examines whether the unauthorized use of a trademark after the termination of a franchise constitutes counterfeiting. Currently, the United States Courts of Appeal for the Sixth and Ninth Circuits are divided in answering this question. The Sixth Circuit has held that a franchisee’s use of a franchisor’s trademark following the termination of a franchise does not constitute a counterfeit mark under the Lanham Act. However, the Ninth Circuit has held that a licensee’s use of a licensor’s certification mark following the termination of the license does constitute a counterfeit mark. While certification marks and trademarks differ in name, the core purpose of each remains the same: to prevent public confusion. Thus, the question remains: does a former franchise’s continued unauthorized use of that franchise’s trademark constitute counterfeiting? This Note agrees with the holding of the Ninth Circuit: a counterfeit mark exists when a non-genuine mark is registered with the Principal Register for use on the same goods, the Registered mark was in use, and the use of the mark was unauthorized. Thus, the unauthorized continued use of a franchise’s trademark constitutes counterfeiting. While the Sixth Circuit incorrectly interpreted the Lanham Act, it has identified eight criteria for evaluating the likelihood of public confusion, a central element of a counterfeiting claim. Therefore, the unauthorized use of a trademark after the termination of a franchise constitutes counterfeiting and can be determined by evaluating these criteria.

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