## Facts

- Ross Cosmetics Distribution Centers, Inc. (Ross) sold cosmetic products, including bath oils, under the names **Gorgeous** and **Love Birds**.
- Ross positioned those products as low-priced imitations of well-known bath-oil products associated with the registered U.S. trademarks **GIORGIO** and **L’AIR DU TEMPS** (owned by nonparties).
- Ross’s labeling and sales materials made the comparisons explicit (e.g., indicating the Ross products were comparable to the trademarked products), while also including disclaimers stating the products were not the trademark owners’ goods.
- In 1991, the United States Customs Service issued a ruling concluding that Ross’s merchandise, as marked and presented, involved **counterfeit use** of registered United States trademarks and therefore could not be admitted.
- Ross challenged Customs’ determination in the United States Court of International Trade.

## Issues

1. Whether Customs properly determined that Ross’s imported, comparison-labeled bath oils involved “counterfeit” use of registered trademarks for purposes of Customs enforcement.
2. Whether Customs could refuse entry based on that counterfeit determination notwithstanding Ross’s use of different product names and inclusion of disclaimers.

## Decision

- The Court of International Trade sustained Customs’ determination.
- The court upheld Customs’ refusal to admit the merchandise based on its finding that the trademark references and overall marking constituted counterfeit use under the governing trademark-import restrictions.

## Legal Principles

- A “counterfeit” mark, for import-enforcement purposes, is a spurious designation that is identical with, or substantially indistinguishable from, a registered mark when used in connection with the relevant goods.
- In assessing counterfeit use at the border, Customs and the reviewing court may consider how registered marks appear on the product packaging and labeling, including comparative references that place the registered mark on the imported goods or their containers.
- Disclaimers of affiliation do not necessarily prevent a counterfeit finding when the imported goods’ labeling uses the registered marks in a manner that trades on the marks’ commercial source-identifying function.
- Customs may refuse admission of goods determined to bear counterfeit use of registered trademarks pursuant to the statutory scheme governing importation of trademarked goods.

## Conclusion

Ross’s bath oils were marketed under different names, but the labeling and explicit comparisons to registered marks led Customs to treat the imports as counterfeit uses of those marks, and the Court of International Trade upheld Customs’ refusal to admit the merchandise despite Ross’s disclaimers.


Ross Cosmetics Distribution Centers, Inc. v. United States, 34 U.S.P.Q.2d 1758 (1994)