Two recent litigations, one in the Court of International Trade, address the legitimacy of importing genuine goods without the permission of the US trademark owner, commonly referred to as gray market goods. Both involve imported batteries.

Trademark owners have two forms of relief from gray market goods.

The first form of relief authorizes CBP to exclude merchandise bearing a registered U.S. trademark when it is imported without consent of the U.S. trademark owner, provided that (i) the trademark owner has recorded its trademark with CBP, and (ii) the owner of the trademark is a U.S. company and the foreign goods were not manufactured abroad by a party under common ownership or control with it. In this case, goods may be excluded without making a claim or being required to show physical and/or material differences between the goods that the U.S. trademark owner has authorized to be sold in the U.S. and their gray market counterparts.

The second form of relief, referred to as the "Lever Rule", excludes from entry any merchandise bearing a registered U.S. trademark when such merchandise is imported without the consent of the U.S. trademark owner, provided that: (i) the trademark owner has recorded its trademark with CBP, and (ii) the trademark owner demonstrates that the imported goods are physically and materially different than the authorized goods sold in the U.S.

The first of the two cases was brought in the Federal District Court in Chicago. That litigation asserts that the importation of batteries that, according to the plaintiff trademark owner, are different from the batteries it sells in the United States. The imported batteries are different from those sold in the US largely in terms of their packaging, warrantees and similar consumer-related elements rather than the physical nature of the batteries.

The CIT litigation challenges CBP's decision to grant Lever treatment to the batteries. Generally, the plaintiff in the CIT litigation argues that CBP should not have granted Lever treatment to the batteries without an opportunity for public comment. Further, the complaint alleges that the trademark owner sells batteries in the United States that do not exhibit the warranties, safety information and consumer warnings that it claims distinguish batteries untended for domestic consumption from the imported batteries.

 

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, deals with women's, open toe/open heel, below-the-ankle, platform wedge sandals with outer soles of rubber/plastics. The leather uppers are attached in four places on either side of the platform/wedge bottoms by riveted, magnetized, metal pegs. The wedge bottoms consist of plastic that is wrapped with a thin layer of cork, stacked leather, or wood. Each has a wrapped, cushioned insole and holes with metal inserts that correspond to the pegs of the uppers. All of the uppers are removable and interchangeable with the wedge bottoms. The uppers will be imported with corresponding bottoms. Some leather uppers will be imported separately. All of the uppers are valued over $2.50 per pair.