IP Law Daily, TRADEMARK—S.D.N.Y.: OtterBox maker denied quick win on claims against sellers of alleged counterfeits, (Jul 22, 2026)

By Karen Servidea, J.D.

Lack of images of authentic boxes deprived court of ability to perform side-by-side comparison that would reveal any deviations between the goods at issue and the authentic goods.

The manufacturer of OtterBox cases for mobile devices failed to establish as a matter of law that boxes sold by a liquidation company were counterfeit, a federal district court in New York has held. The court denied the manufacturer summary judgment on its trademark infringement, counterfeiting, unfair competition, and dilution claims. It further denied the manufacturer summary judgment on its state law deceptive business practices claim. With respect to willfulness, the court determined that the evidence was susceptible to more than one interpretation and thus denied summary judgment on that issue (Otter Products, LLC v. Grand Rapids Liquidators LLC, No. 1:25-cv-02294-CM-SLC (S.D.N.Y. Jul. 21, 2026)).

The manufacturer, which owns numerous trademarks registered with the United States Patent and Trademark Office, alleged that it discovered suspicious listings of OtterBox products on eBay being sold by “korting_outlet.” The “korting_outlet” account is owned by an individual, who, along with another individual, owns Grand Rapids Liquidators LLC, a liquidation business that resells customer returns and excess inventory at retail locations and on the internet.

According to the manufacturer, it ordered two of the products and, upon receiving them, confirmed that the cases were not authentic and did bear counterfeits and infringements of the manufacturer’s trademarks. The manufacturer filed suit against the sellers asserting causes of action for trademark infringement and counterfeiting in violation of Section 32 of the Lanham Act; unfair competition, false designation of origin, and false description in violation of Section 43(a) of the Lanham Act; trademark dilution in violation of Section 43(c) of the Lanham Act; and unfair and deceptive business practices in violation of Section 349 of New York General Business Law. The manufacturer moved for summary judgment on all claims.

Genuine dispute as to whether items are counterfeit. The court first addressed the manufacturer’s claims of trademark infringement and counterfeiting and unfair competition under the Lanham Act. It explained that a plaintiff is required to show that it has a valid mark entitled to protection and that the defendant’s use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant’s goods. With respect to the second element, the court explained that, under a counterfeit theory of infringement, it need only determine whether there are items to be confused, that is, whether the items are, in fact, counterfeit and whether the defendant sold them.

The sellers admitted that they distributed products bearing the manufacturer’s marks. According to the court, however, there was a genuine dispute as to whether those products were counterfeit. In that regard, the manufacturer submitted an affidavit from a senior manager explaining that he could determine that the goods were counterfeit from looking at the listings. The manager further stated that he was able to confirm that the goods were not authentic upon reviewing the products after purchasing them. The court found, however, that the basis for the manager’s determination was “entirely unclear” and noted that the manager did not “provide any factual basis for that assertion or any explanation as to how he arrived at that conclusion.”

The court further noted that, although the manufacturer submitted images of the two allegedly counterfeit cases it purchased, it did not explain what aspects evidenced counterfeiting or provide images of authentic OtterBox products. The latter failure, the court explained, deprived the court of the ability to perform a side-by-side comparison revealing whether there are slight deviations between the goods at issue and the authentic goods.

Trademark dilution. The court likewise denied the manufacturer summary judgment with respect to its claim for trademark dilution. It explained that dilution by tarnishment is association arising from the similarity between a mark and a famous mark that harms the reputation of the latter and that likelihood of dilution is established when a defendant has distributed a counterfeit product of inferior quality to the genuine product.

The court held that a genuine issue of fact prevented it from determining whether the products sold by the sellers were of inferior quality such that their sale would dilute the quality of the manufacturer’s marks—namely, whether the sellers actually sold counterfeit products. In addition, the court explained, the manufacturer had offered no evidence to suggest that the phone cases sold by the sellers were of lesser quality to the manufacturer’s products.

No proof of injury to public interest for state law claim. The court also denied the manufacturer summary judgment on its claim of deceptive business practices under New York state law. Trademark infringement claims are not cognizable under that law unless there is “a specific and substantial injury to the public interest over and above the ordinary trademark infringement.” The court determined that the manufacturer had proffered no evidence bearing on such an injury.

Genuine dispute as to willfulness. The court also denied the manufacturer summary judgment on the issue of the willfulness of the alleged Lanham Act violations. Although willfulness is not necessary to establish liability under the Lanham Act, willfulness is a prerequisite for the award of heightened statutory damages.

The manufacturer asserted that there was circumstantial evidence of willfulness—for example, that the sellers continued to distribute the allegedly counterfeit products despite the filing of the manufacturer’s lawsuit. According to the court, however, the sellers offered what a reasonable juror might consider to be innocent explanations. The court thus found the evidence to be susceptible to more than one interpretation, precluding summary judgment in favor of the manufacturer.

The Case is No. 1:25-cv-02294-CM-SLC.

Judge: McMahon, C.

Attorneys: Michael Lee (Lee Law PLLC) for Otter Products, LLC. Todd Wengrovsky (Law Offices of Todd Wengrovsky, PLLC) for Grand Rapids Liquidators LLC.

Companies: Otter Products, LLC; Grand Rapids Liquidators LLC

Cases: Trademark NewYorkNews