Trademark Owners Beware: Use of Alternate Sales Channels Jeopardizes Enforcement Against Gray Market Goods

摘要

The growing presence of gray market goods can create serious challenges for companies with strong brands by upsetting price stability, interfering with marketing channels, potentially damaging brand images, and creating products liability risk. The sale of gray market goods in the United States may constitute trademark infringement if the goods are materially different from authentic goods that are authorized for sale in the United States by the trademark owner. But what constitutes a material difference? In this article, G. Brian Busey and Rory J. Radding, partners at Morrison & Foerster LLP, explore a recent decision by the US Court of Appeals for the Federal Circuit that clarifies the material difference standard with potentially important implications for enforcement activity by US trademark owners against gray market goods. The authors explain how the material difference standard articulated by the Federal Circuit has both positive and negative consequences for US trademark owners.