The cases discussed in this article should provide some relief to the trademark owner confronting a seemingly endless tide of infringing gray market goods. The case law demonstrates a concern by the courts for protecting the rights of the US trademark owner and provides guidance to finding those physical and material differences between the authorized and unauthorized goods necessary to constitute an infringement. As a practical matter, US trademark owners should identify their authorized dealers to potential purchasers and educate US consumers about the value of buying genuine product only through those authorized dealers. If a warranty program is available only to consumers who purchase their product through authorized dealers, for example, it seems appropriate to inform consumers through advertising or promotional materials. Additionally, the US trademark owner should let consumers know that its authorized dealers have expertise in understanding the history and value of the product. In taking this approach, the US trademark owner should consider instituting an educational program and supplying its dealers with the necessary background materials. Expressly informing potential purchasers in the United States about the differences between authorized and unauthorized product, and the places where those goods are sold, may help to both direct business away from the gray market and to create the kind of evidence that will help convince a court that the differences are material.
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