independent foreign manufacturer be removed from the purview of the statute."
Although settling the inter-circuit conflict about the validity of the customs
regulations, the Court's decision continued to manifest deeper doubts about
the relationship between the public interest in trademark protection and trademark owners' interest in sheltering expected returns on their investments.
While Brennan and his camp had viewed section 526 as consistent with an
intent to preserve trademarks' role as "a device to protect the public against
fraud by properly identifying the product's manufacturer, not a device to protect
the trademark owner against competing sales of its own goods,"
150 Scalia had
conceived of a trademark owner's "investment" as equivalent to "the entire
goodwill" associated with the mark.
151 The basic ambivalence in the nature of
trademark protection reflected in these two opinions had endured since the
early days of American trademark law and, it seemed, would continue to
characterize future parallel importation cases, whether decided under trademark infringement theories or under new interpretations of section 526.
618 F. Supp. 700 (D.N.J. 1985), rev'd, 878 F.2d 659 (3rd Cir.) (reversal discussed infra, chap. 7). cert. denied, 493 U.S. 853 ( 1989).
See 618 F. Supp. at 703, 707.
In addition to claiming trademark infringement, the plaintiff also asserted that the
defendant's imports should be excluded under sections 42 and 526. Seeid. at 703.
Id. at 711 (emphasis added).
Id. at 712 (ellipsis by the court) (quoting Osawa & Co. v. B & H Photo, 589 F. Supp.
1163,1174 [S.D.N.Y. 1984]).
618 F. Supp. at 711 (emphasis added). Cf. A Bourjois & Co. v. Katzel, 274 F. 856,
860 (S.D.N.Y. 1920) ("the original owner of the business and its trade-marks had completely
parted therewith to a vendee, who had proceeded upon the strength of his ownership to
develop an American market'). Note also the Weil court's two usages of "goodwill." The
court apparently conceived of local proprietary goodwill as something to be "developed," but
of transnational psychological goodwill as something otherwise to be "relied upon."
599 F. Supp. 1380 (E.D.N.Y. 1984), rev'd, 806 F.2d 392 (2d Cir. 1986).
Questia, a part of Gale, Cengage Learning. www.questia.com
Book title: Parallel Importation in U.S. Trademark Law.
Contributors: Timothy H. Hiebert - Author.
Publisher: Greenwood Press.
Place of publication: Westport, CT.
Publication year: 1994.
Page number: 122.
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