CLIENT ALERT: Lanham Act Challenges to Gray-Market Goods

Trademark holders may face significant issues when goods bearing their marks are manufactured abroad and legally purchased outside the United States, then imported without their consent. These are so-called “gray-market goods.” See Weil Ceramics & Glass, Inc. v. Dash, 878 F.2d 659, 662 n.1 (3d Cir. 1989); K Mart Corp. v. Cartier, Inc., 486 U.S. 281, 285 (1988). The incentive to import gray-market goods into the United States exists because goods intended for certain non-U.S. markets are often cheaper. The products may bear identical trademarks and look very similar to corresponding products authorized for the U.S. market. But the quality may differ—considerably. Gray-market goods may cause a host of problems.

Some of the most pressing problems associated with the unauthorized importation of gray-market products concern regulatory compliance. For example, gray-market products may:

      • Not be labeled in English
      • Lack required information or warnings on labels or packaging; and
      • Contain formulations not approved or intended for the U.S. market

The Food and Drug Administration and other federal and state regulatory bodies may seek to hold the American trademark owner responsible and impose penalties for such violations.

The presence of cheaper gray-market goods may also disrupt relations with authorized U.S. distributors. And consumers who unwittingly buy gray-market goods expecting a certain quality may be severely disappointed. Thus, even if a brand owner manages to stave off sanctions or other immediate disruptions, it can be important take swift action to stop, or at least severely curtail, the importation of gray-market goods.

The primary federal trademark statue in the United States, the Lanham Act, may provide one route to relief. Practical problems, however, such as identifying who is importing the offending goods and determining where they are amenable to suit may prove insurmountable. And in any given case, the costs and risks of litigation may outweigh the expected returns. Nevertheless, for companies facing the unauthorized importation of gray-market goods, pursuing Lanham Act relief is something to consider.

Are Lanham Act claims possible when a defendant acquired the trademark holder’s authorized products (albeit outside of the United States)? The answer, it turns out, is at least sometimes yes. Claims for trademark infringement, false designation of origin and unfair competition, and trademark dilution against defendants selling and distributing unauthorized gray-market goods have all recently survived dismissal. See, e.g., Nestle USA, Inc., et al. v. Ultra Distribuciones Mundiales S.A. DE C.V., et al., No. 5:20-CV-384-DAE (W.D. Tex., Feb. 1, 2021).

If you have a potential gray-market or other Lanham Act issue, contact Elizabeth Brannen.

About Stris & Maher LLP
We are nationally recognized trial and appellate lawyers. Headquartered in Los Angeles, we maintain a nationwide practice representing both plaintiffs and defendants. We resolve complex, high-stakes, and high-profile business disputes in state and federal courts throughout the country, including the United States Supreme Court.

David Friedman Joins Stris & Maher to Launch Bay Area Office

LOS ANGELES, California (February 1, 2021) – Stris & Maher LLP is pleased to announce its expansion into Northern California with the addition of Dave Friedman and colleagues from Ogloza Fortney + Friedman LLP, a Bay Area litigation boutique.

For over two decades, Dave has represented Bay Area companies, startups, directors and officers, executives, and investors. He is frequently sought out by in-house counsel, entrepreneurs, and investors as well as Am Law partners looking to refer specific matters to an experienced and trusted litigator. Dave began his career in the San Francisco office of Latham & Watkins LLP, where he practiced for 12 years.

“We are delighted that Dave has agreed to open and lead our San Francisco office,” says managing partner Elizabeth Brannen. “We regularly handle significant litigation and intellectual property matters for Bay Area clients, including two recent trials. Now we will do so with boots on the ground.”

Dave handles a wide variety of complex disputes in courts throughout the country, including the Delaware Court of Chancery. He has extensive experience with corporate governance disputes, representing plaintiffs and defendants in breach of fiduciary duty, corporate control, and founder and partnership litigation. He also guides public and private companies as well as executives through internal investigations, government inquiries, and SEC enforcement actions.

“I’m thrilled to join forces with such a highly regarded group of lawyers,” says Dave, pointing to the firm’s recent recognition as a finalist for The American Lawyer’s Boutique Litigation Firm of the Year. “There are clear synergies between my complex litigation practice and theirs.”

Dave will be joined in the San Francisco office by associate Michelle Covington and senior paralegal Nick Bertolino. Partner Dana Berkowitz, who chairs the firm’s healthcare practice and will also spend significant time in the San Francisco office, welcomes the three to the firm: “I look forward to working side by side with each of you to deliver exceptional client service.”

Peter Stris Named “Top 100” California Lawyer

Peter Stris has been named one of the Top 100 Lawyers in California by the Daily Journal. This annual award celebrates California attorneys doing cutting-edge legal work, with an emphasis on the impact their work has on their clients and the legal profession.

Mr. Stris was selected for his courtroom successes—at trial and in appeals—in a wide range of complex business lawsuits throughout the country.

Read the Daily Journal profile of Mr. Stris here.

Peter Stris Named One of Los Angeles’ “Leaders of Influence: Litigators and Trial Lawyers”

The Los Angeles Business Journal has named Peter Stris to its prestigious list of “Leaders of Influence: Litigators and Trial Lawyers.”

“Based in Los Angeles, Peter Stris represents clients in complex business cases before trial and appellate courts nationwide, including the U.S. Supreme Court,” writes the Journal. “Stris has represented parties in dozens of high-stakes and high-profile business appeals throughout the nation.”

The Journal recognizes top litigators whose practices are based in the Los Angeles region. A copy of the Journal’s special section covering this award is available here.

Peter Stris Named Legal Lion for Victory Against Volkswagen

Law360 named Peter Stris a legal lion for his victory on behalf of government clients in The Environmental Protection Commission of Hillsborough County, et al. v. Volkswagen Group of America, Inc., et al., No. 18-15937, a nationally watched Ninth Circuit appeal with massive economic implications. (Legal Lion). Mr. Stris was also named a runner up for The Litigation Daily‘s Litigator of the Week. (Litigator of the Week).

Case coverage
U.S. Ruling Could Mean a Flood of New Claims Against Volkswagen (The New York Times, June 1, 2020)
9th Circ. Revives Post-Sale Claims In VW Emissions Suit (Law360, June 1, 2020)

Peter Stris Named Winner Of Managing IP’s Impact Case of the Year Award

Peter Stris was named a winner of Managing IP’s Impact Case of the Year award for his work before the U.S. Supreme Court in Fourth Estate Public Benefit Corp. v., a case in which Mr. Stris prevailed 9-0. Additionally, earlier this year, Mr. Stris was named to Managing IP‘s short list for Outstanding Practitioner: Appellate.

Stris & Maher Announces Election of Three New Partners

Stris & Maher LLP is pleased to announce the election of three new partners. Justin Barnes, Victor O’Connell, and Radha Pathak join the firm’s partnership, effective January 1, 2020.

“We are delighted to welcome these talented litigators to the firm’s partnership. Justin, Victor, and Radha each embody our entrepreneurial spirit and have been a tremendous asset to our firm and clients,” said Stris & Maher Founding Partner Peter Stris. “We look forward to continuing our work alongside them as we build on our track record of success.”

Justin Barnes

Justin Barnes joined Stris & Maher as counsel in 2018. Mr. Barnes is a trial and appellate attorney whose practice focuses on high-stakes patent litigation. He has served as trial counsel at over half a dozen trials, has authored numerous briefs as well as argued before the Federal Circuit, and has been counsel on multiple cases before the Supreme Court. Mr. Barnes received his J.D. from UCLA.

Victor O’Connell

Victor O’Connell joined Stris & Maher in 2012 and is the firm’s first associate to be named partner. He often holds leading roles in the firm’s state and federal trial court matters, and has advised on several of the firm’s appellate and U.S. Supreme Court cases. Mr. O’Connell received his J.D. from the University of Southern California Gould School of Law, where he was elected to the Order of the Coif and was an editor of the Southern California Law Review.

Radha Pathak

Radha Pathak joined Stris & Maher full-time as counsel in 2018, having previously worked with the firm on high profile appellate cases. Ms. Pathak represents firm clients in high-stakes matters and high-impact pro bono cases in trial and appellate courts throughout the country. She previously was a tenured law professor at Whittier Law School. She served as a judicial clerk to the Honorable Raymond C. Fisher of the United States Court of Appeals for the Ninth Circuit. Ms. Pathak received her J.D., cum laude, from New York University Law School.

Stris & Maher Makes National Law Journal’s Appellate Hot List for Third Time

Stris & Maher is honored to have been named to The National Law Journal’s Appellate Hot List in 2019. This is the third time in four years that the firm has been recognized. It was also recognized in 2016 and 2018.

The Appellate Hot List highlights law firms across the country that have handled exemplary appellate matters and have won at least one significant, high-stakes appellate victory. Of the 25 firms recognized this year, Stris & Maher was the only firm that is not on the AmLaw 100.

The firm had multiple appellate victories this year, including a 9-0 U.S. Supreme Court victory in Fourth Estate Public Benefit Corp. v. As Mr. Stris noted in Q&A with the publication highlighting this victory, “Over the last four U.S. Supreme Court terms, we won five of the nine merits cases we handled.” Mr. Stris credited this success to the appellate team’s talent and hard work. He also commented on the firm’s investment in its future: “Our junior lawyers hold significant roles on our cases. This year, they crafted strategy, drafted briefs, met with the Office of the Solicitor General, presented federal circuit court arguments and much more.”

Read Mr. Stris’ full Q&A with The National Law Journal here.

Bridget Asay Elected to American Academy of Appellate Lawyers

Stris & Maher LLP is pleased to announce that Bridget Asay has been elected as a Fellow to the American Academy of Appellate Lawyers (AAAL). Ms. Asay is the first Vermont attorney to be invited to this prestigious Academy, where she joins co-founding partner and 2018 AAAL Fellow Peter Stris.

The AAAL was founded in 1990 to advance the administration of justice and encourage the highest standards of professionalism and advocacy in appellate courts. Prospective members must be nominated by a current Fellow, thoroughly vetted by the legal and judicial communities, and elected to the fellowship by the AAAL Board of Directors. The organization is limited to 500 lawyers, who must each “possess a reputation of recognized distinction as an appellate lawyer.”

“I am truly humbled to join such a talented group of appellate attorneys, especially one that includes my friend and colleague Peter Stris,” Ms. Asay said. “I look forward to learning from and sharing my experience with the other AAAL Fellows.”

Ms. Asay handles a wide variety of high-stakes appellate and trial court litigation at Stris & Maher. Prior to joining the firm in 2017, Ms. Asay handled appellate litigation for the Vermont Attorney General’s Office, where she was appointed as the first Solicitor General for the State of Vermont.

“Bridget is an extremely talented, highly experienced, and well-respected member of the appellate community,” said Mr. Stris of Ms. Asay’s election to the AAAL. “I am delighted to welcome her into the Academy.”

Peter Stris to Serve as Adviser on ALI’s Third Torts Restatement

Mr. Stris has been invited to serve as an adviser on ALI’s Restatement of the Law Third Torts: Concluding Provisions. This ongoing revision will include new topics such as medical liability, vicarious liability, wrongful death and survival actions, among others. See details here.