## Facts

- Chong Lam and Siu Yung Chan controlled multiple companies that imported handbags and wallets into the United States and used related entities abroad to manufacture or ship goods.
- U.S. Customs and Border Protection inspected a shipment and found counterfeit handbags hidden among legitimate handbags.
- The seized items included handbags bearing a plaid pattern closely resembling Burberry’s registered “Burberry Check” and, in some instances, a logo resembling Burberry’s equestrian knight design.
- Burberry owned federal registrations for the Burberry Check and the equestrian knight design and did not authorize defendants or their companies to use those marks.
- The government’s theory was that defendants used legitimate shipments to conceal counterfeit goods and then sold the counterfeit items to U.S. buyers as designer merchandise.
- At trial, the jury compared exemplars of Burberry’s registered check pattern with the patterns on seized goods and heard testimony from a Burberry representative.

## Issues

1. Whether the evidence was sufficient to support convictions for trafficking in counterfeit goods under 18 U.S.C. § 2320(a) where the accused plaid pattern was similar, but not identical, to Burberry’s registered plaid mark.
2. How to apply § 2320’s definition of “counterfeit mark,” including whether the accused mark was “substantially indistinguishable” from the registered mark and whether its use was “likely to cause confusion, to cause mistake, or to deceive.”
3. Whether defendants waived sufficiency arguments on appeal by failing to raise them with specificity in their Federal Rule of Criminal Procedure 29 motions.
4. Whether challenged prosecutorial remarks in closing argument required a new trial.

## Decision

- The Fourth Circuit affirmed the convictions for conspiracy to traffic in counterfeit goods, trafficking in counterfeit goods (18 U.S.C. § 2320(a)), and smuggling.
- The court held that a rational jury could find the plaid pattern on the seized goods was a “counterfeit mark” because it was substantially indistinguishable from Burberry’s registered Burberry Check and was used in a manner likely to cause consumer confusion.
- The court held that when a defendant asserts specific grounds in a Rule 29 motion, other sufficiency grounds not specifically raised are waived on appeal.
- The court held the challenged prosecutorial remarks, viewed in context, did not warrant reversal.

## Legal Principles

- Under 18 U.S.C. § 2320, a “counterfeit mark” includes a spurious mark that is “identical with, or substantially indistinguishable from,” a registered mark, and whose use is likely to cause confusion, mistake, or deception.
- “Substantially indistinguishable” does not require exact duplication; minor stylistic differences may still satisfy the standard if the overall impression to an ordinary observer is essentially the same.
- Likelihood of confusion in a criminal counterfeiting prosecution may be proven through visual similarity and contextual evidence about the goods and their marketing; consumer surveys are not required.
- A defendant who raises specific grounds in a Rule 29 motion waives other, unraised sufficiency challenges on appeal.
- Prosecutorial comments warrant reversal only if improper and so prejudicial that they deny the defendant a fair trial, considering the full context, the evidence, and any curative instructions.

## Conclusion

The Fourth Circuit upheld criminal counterfeiting convictions based on a plaid pattern mark where the jury could find the accused pattern substantially indistinguishable from a registered Burberry mark and likely to confuse consumers, and it held that specifying limited grounds in a Rule 29 motion waives other sufficiency arguments on appeal.


United States v. Chong Lam, 677 F.3d 190 (4th Cir. 2012)