The Ohio Supreme Court last week upheld a ruling which found that a trademark expert must do more than vouch for the registration of well-known brands.

A 5-2 majority affirmed an 11th District Court of Appeals ruling, reversing a Lake County court's conviction of a "purse party" hostess on charges of trademark counterfeiting and possessing criminal tools.

The conviction of Juanita Troisi resulted from testimony of Cleveland Police Sgt. Timothy Richissin, who was also employed by the Professional Investigation Consulting Agency, where he specialized in investigating intellectual-property issues

"We hold that the state provided insufficient evidence to show that the trademarks Richissin compared with the marks on the seized bags were registered on the principal register in the U.S. Patent and Trademark Office," Chief Justice Thomas Moyer wrote for the court. "The statute contains very specific language protecting only those marks registered on the principal register. Richissin testified that through his 'training and experience' he was aware that the marks were registered, but that he had personally never seen any documents from the U.S. Patent and Trademark Office showing the registration. He had never obtained official trademark records, he had never seen any of the trademarks on a registry document, and he did not know when the trademarks were issued, when they expired, or if they had been renewed.

"In sum, his testimony was not sufficient to prove beyond a reasonable doubt that the marks were registered. Richissin's testimony proved, at best, that the seized items bore marks that were 'identical or substantially indistinguishable' to marks provided to him during his training, but not to any mark proven to be registered as required by the statute."

Troisi hosted a purse party in Kirtland, where she offered purses and other items for sale, case background provided. The Kirtland police were informed of this party by an invitee. After determining that knock-off designer labels' might be sold at the party, Sgt. Jamie Tavano contacted Richissin for help on the case. The police conducted a raid of the party, seizing more than 1,700 allegedly counterfeit purses, wallets and jewelry pieces. At the scene, the police also obtained a written statement from Troisi in which she admitted knowing that "the purses and wallets were not authentic."

Troisi was indicted on four counts: R.C. 2913.32(A)(4), R.C. 2913.34(A)(4) and (5), and R.C. 2923.24. Two counts were dismissed and a trial proceeded on one count of trademark counterfeiting (R.C. 2913.34(A)(4)) and one count of possessing criminal tools (R.C. 2923.24), summary continued.

At trial, Richissin testified that he had been trained by several purse and jewelry companies to recognize their trademarks and to recognize counterfeit products. He testified that in his opinion, the items seized from the purse party were counterfeit. No certified copies of the registered trademarks were offered as evidence; no other witness testified about the registration status of the trademarks; and no examples of genuine trademarks or genuine products were introduced at trial.

A jury found Troisi guilty of a single count each of trademark counterfeiting and one count of possessing criminal tools,summary detailed. The 11th District Court of Appeals reversed, holding that there was insufficient evidence for the jury to find that the items seized bore a counterfeit mark as defined by law and that Richissin's testimony was improper because it was introduced without a proper foundation. Troisi's convictions were vacated.

The majority determined even Troisi's written confession helped the prosecution meet its burden of proving the registration element of the crime. According to background, she admitted that she knew the "purses and wallets were not authentic," however, the high court reasoned it did not prove that any of the marks Richissin used in his comparisons were registered.

"The confession may be useful to the prosecution in proving other elements of their case, but it does not prove the registry status of any trademark," Moyer continued. "This gap in evidence is not due to a 'procedural deficiency,' permitting a retrial, as suggested by the state. Our holding that the evidence is insufficient for a conviction is based on a review of all the evidence, including Richissin's testimony.

"Double-jeopardy protections therefore attach, and retrial is barred."

Justices Evelyn Lundberg Stratton and Maureen O'Connor offered dissent to the majority holding.

"The trier of fact, the jury, was in the best position to discern the weight and quality of the state's evidence, including the testimony of the state's expert, Mr. Richissin," O'Connor wrote. "The court of appeals' decision focuses on the state's failure to introduce a certified copy of the trademarks on file with the U.S. Patent and Trademark Office and concludes that the state's omission is grounds for reversing the jury's verdict. But the focus should remain on the rule that it is the role of the jury, not the appellate court, to determine the weight and credibility of the evidence adduced at trial, including Richissin's testimony that he can identify a counterfeit good by virtue of his training and experience."

Joining the chief justice to form the majority were justices Paul Pfeifer, Terrence O'Donnell, Judith Ann Lanzinger and Robert Cupp.

The case is cited as State v. Troisi, Slip Opinion No. 2010-Ohio-275.