Articles

"Material Differences" Outside the Gray Market Context

IP Litigator
August 9, 2009

Sommers, Mark , Kilaru, Naresh

Article

In this article, Finnegan attorneys Mark Sommers and Naresh Kilaru take on the issue of “material differences” in trademark infringement cases: Sommers and Kilaru begin by noting that the issue most often arises in the context of gray market goods, when the question is whether unauthorized imports are materially different from the product sold by an authorized U.S. distributor or owner. They go on to discuss the case of Beltronics USA v. Midwest Inventory Distribution, in which the U.S. Court of Appeals for the Tenth Circuit confirmed the “material differences” issue is not limited to the gray market context, but applies wherever goods are resold outside the trademark owner’s intended chain of distribution, with an emphasis on Web commerce. The article concludes that “material differences” are not limited to physical differences between products, as the Beltronics decision opened the door for trademark infringement suits against online merchants who resell a trademark owner’s products without the same warranty and service.