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Exhausted and Gray, but Still Going Strong:
A Comparative View of Parallel Imports from the Trademark Perspective


By Dennis S. Prahl, Esq.[1]

Introduction

Trademark wars are most often waged against third parties in the field of opposition, cancellation, infringement, unfair competition or passing off proceedings. However, in the case of gray marketers and parallel importers, trademark owners lament that "we have met the enemy, and they are ours.” Such is the plight of parallel imports, also known as "reimports" and "gray market goods", chiefly by their opponents, presumably to insinuate some association with "black market" goods. [2] Even though parallel importers are usually third parties unrelated to the trademark owner, the source of parallel imports is customarily the trademark owner or those within his control.

 

[1] Partner Ladas & Parry. Mr. Prahl is resident in the New York Office of the firm. Copyright 2001 Dennis S. Prahl. All rights reserved.
[2] See Weil Ceramics & Glass, Inc. v. Dash , 878 F.2d 659, 11 USPQ2d 1001 (3d Cir. 1989) "the term 'gray-market' unfairly implies a nefarious undertaking by the importer, and.the term parallel import accurately describes the goods and is, perhaps, a better term because it is devoid of prejudicial suggestion... However...the term 'gray-market' goods...has become the commonly accepted and employed reference to the goods at issue."

 

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(C) Copyright 2001 Dennis S. Prahl
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