I represent companies accused of trademark infringement under the legal theory of the Gray Market. A "Gray Market" product, is a product that is manufactured overseas which bears a valid U.S. trademark, and imported into the United States outside authorized channels of distribution. The manufacturers are typically large multinational corporations that sell products in many countries. An easy example is soft drinks. Pepsico makes Pepsi for the United States using corn syrup. But, in Mexico, Pepsi is made with sugar. These days many American consumers want to avoid corn syrup and want sugar to sweeten their soft drinks. Therefore, a market in the United States exists for sugar sweetened Pepsi. Entrepreneurs can serve this market by purchasing wholesale, large quantities of Mexican Pepsi in Mexico, bringing it into the United States and then selling it to small grocers or shopkeepers who then sell to the public at a small premium. The Mexican Pepsi is a "gray" good because it is being sold here without the permission of Pesico outside its authorized distribution chain. Its genuine Pepsi, bearing a valid U.S. trademark, but made for sale in the Mexican market and not the U.S. market. This is an easy example but Gray Market law can be highly nuanced and complex. Any product manufactured outside the U.S., and then imported here without the markholder's consent could be the subject of this type of claim.
If you are an importer of goods into the United States, and you receive a demand letter from the manufacturer demanding you cease selling their products, contact me for consultation and to plan a response to their demand. I can help you.
I represented a group of Japanese exporters and a group of American importers of used Japanese tractors before the United States International Trade Commission in a 337 investigation. In the Matter of Certain Agricultural Tractors Under 50 Horsepower Takeoff Inv. No. 337-TA-380, USITC Pub. 3026 (March 1997). Together with my father, we litigated this case from its filing to its final appeal before the United States Federal Circuit Court of Appeals. Gamut Trading v U.S.I.T.C. 200 F3d 775 (Fed. Circ. 1999). A link to that opinion is set forth on this page.
I also represented a used tractor vendor in Georgia in a gray market trademark case involving Yanmar tractors. Yanmar Tractor, et, al, v. North Georgia Equipment, et. al., 4 04-CV-16 HLM (N.D Georgia, Rome Div.)
Finally, I am general counsel to the Used Tractor Dealer's Association, (the UTDA), which is a trade group dedicated to the refurbishing of imported Yanmar tractors with U.S. certified safety equipment. A link to that organization is also given on this page.
