Sad to say the CBP is right here: A product that looks too much like another can be a "counterfeit" under the Lanham Act even if the packaging makes it clear these products don't come from Apple.
The courts have ruled that product shapes can be registered as trademarks. Once so registered, copycat designs can qualify as "counterfeits"--again, even if the labeling is clear and non-deceptive.
This is yet another reason why product shapes shouldn't be registrable as trademarks.
And if you don't like CBP enforcement of trademarks, you'll hate this proposal: patentlyo.com/patent/2020/01…
To be clear, I mean CBP is right that these could potentially be "counterfeits," despite the packaging.

Without seeing the registration(s) at issue, I won't comment on the merits (i.e., whether these products are, in fact, counterfeits).
Okay, it looks like these may be the registrations at issue:

tsdr.uspto.gov/#caseNumber=88…

tsdr.uspto.gov/#caseNumber=88…

If that's right, and from the photos in the @verge stories, I don't think the OnePlus Buds are counterfeits.
For more on CBP enforcement of trademark infringement & counterfeiting, I recommend this article by @LCGrinvald: papers.ssrn.com/sol3/papers.cf…
Anyway, what I'd really like to know about this seizure is: Did Apple file an allegation against the OnePlus Buds with the CBP? (See generally cbp.gov/document/publi…) Or did the CBP seize them on its own initiative?

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More from @design_law

17 Dec 19
Morning trademark musing: There are two companies currently involved in a trademark and trade dress dispute. I buy the contested products from both of them.
The purported mark owner has messed up 50% of my orders and I just learned that while it sells gift sets, it doesn't provide wrapping, gift receipts, or gift messages.
The accused infringer has flawless execution when it comes to distribution & delivery. It provides gift options.
Read 4 tweets
27 Dec 18
Question: When & how did the law shift from "trade dress is the total look and feel of a product" to "you can claim any visual element(s) of a product design as your trade dress"?
A lot of cases still parrot the old "total image" type language but: (1) either that language was never correct; or (2) something very fundamental has changed.
I'm having trouble finding existing literature on the subject (I suspect because we don't have a good shared vocabulary for what's going on now), so if anyone has recommendations, please LMK
Read 6 tweets
24 Oct 18
Design patent law is underdeveloped. But SCOTUS should "stay out of it"?
If SCOTUS had stayed out of #appsung, we'd be stuck with the insane (and ahistorical) Apple/Nordock rule.
Maybe if you want SCOTUS to "stay out of it," don't do insane things? (FTR, I was in the courtroom when that case was argued. The Justices' body language screamed "this is insane.")
Read 7 tweets

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