Costa Del Mar, Inc. v. Unique Variety, Inc. and Pareshkumar Patel — Court grants partial summary judgment on trademark liability for counterfeit sunglasses

Background

Costa Del Mar, Inc. sells eyewear through authorized retailers and online and owns two registrations relevant here: Registration No. 3,273,228 for its "C" design on sunglasses and Registration No. 3,857,379 for the word "COSTA" on sunglasses. Unique Variety operates Jenny's Market, a convenience store in Weymouth, Massachusetts. Pareshkumar Patel manages its daily operations, including product selection, pricing, supplier orders, merchandising, and inventory.

In July 2025, Patel bought twelve pairs of sunglasses in cash from supplier Blue Exodus for $5 each and priced them at $12.99 before tax. A Costa investigator visited the store on December 29, 2025, saw the display, and bought one pair. Costa concluded that the glasses carried counterfeit versions of its logo and brand name, although defendants disputed that the displayed logo and name were Costa's marks. The products also carried a separate "SPEXX" tag.

Defendants had no license or permission from Costa. They sold seven pairs and removed the remaining five after Costa raised infringement allegations; the sales produced $90.93 in gross pre-tax revenue and $55.93 in net profit. Costa filed its single § 1114 infringement claim on February 11, 2026, and moved for partial summary judgment after discovery on August 24, 2026. The motion concerned liability only, not a final damages award.

The Court’s Holding

The court first addressed whether counterfeit marks make confusion presumptively likely without the full eight-factor Pignons analysis. Noting varying approaches elsewhere and no binding First Circuit rule, it followed the district's recent E-Z Telecomm decision on counterfeit Ray-Ban sunglasses. Here, the glasses bore nearly indistinguishable reproductions of the "C" design and the Costa word mark on the same product type for which Costa uses those marks. The court therefore presumed a likelihood of confusion, while also conducting the complete factor analysis for completeness.

That analysis confirmed the presumption. Similarity of the marks and goods overwhelmingly favored Costa, as did mark strength: the Costa brand dated to 1983, the design mark had been used since 2000, and the word mark since 2010. The SPEXX tag did not overcome the similarity of the marks on the glasses themselves. By contrast, trade channels, advertising, and purchaser classes favored defendants because Costa used authorized retailers and charged roughly $100 to $300 per pair, while defendants sold $12.99 glasses beside a convenience-store register. Costa supplied no actual-confusion evidence, and defendants' intent also weighed against confusion because Costa did not contend that they knew the goods were counterfeit.

Those contrary considerations did not change the result. The court emphasized that three of the four especially critical considerations—similarity of marks, similarity of goods, and strength of marks—overwhelmingly favored Costa, while actual confusion was not invariably required, particularly with only twelve pairs offered and seven sold. It held both defendants liable under § 1114. Patel's admitted purchase and placement of the glasses for sale made him a "moving, active conscious force," and liability did not depend on knowledge or intent. The court also dismissed the three pleaded affirmative defenses: Costa elected one statutory-damages remedy under § 1117(c), proximate causation was not an infringement element, and the opinion established a claim on which relief could be granted. The motion was granted, with remedies not decided by this liability ruling.

Key Takeaways

• The court presumed likely confusion because substantially indistinguishable Costa marks appeared on identical goods, but it independently reached the same result through all eight Pignons factors.
• Differences in retail price, customer base, advertising, and sales channels favored the store defendants without overcoming the marks' similarity, the identical product type, and the strength of Costa's marks.
• A separate SPEXX product tag did not dispel confusion arising from the marks placed on the sunglasses themselves.
• Patel faced individual liability because he purchased and offered the sunglasses for sale; neither knowledge that they were counterfeit nor intent to infringe was required.
• The order resolved liability and dismissed three affirmative defenses, but it did not determine the amount of statutory damages or otherwise adjudicate remedies.

Why It Matters

The decision applies the counterfeit-mark presumption where the district acknowledged varying approaches and no binding First Circuit precedent resolving whether the presumption replaces the factor analysis. Its alternative, full Pignons discussion makes the liability result rest on the record as well as the presumption.

For small retailers and corporate officers, the opinion separates infringement liability from culpable intent. Minimal sales, no actual-confusion evidence, and asserted ignorance did not create a trial issue on liability where the accused products reproduced protected marks on the same kind of goods.