Seattle Trademark Lawyer

On February 13, the Ninth Circuit reversed the Central District of California in the trademark infringement case of The Grateful Palate Inc. v. Joshua Tree Imports, LLC, No. 06-55855, 2007 WL 470596 (9th Cir.) (unpublished) (no case link available). In this case, the defendant importer purchased the plaintiff’s Australian wine from a distributor. The plaintiff allegedly had authorized some of its wine for import to the U.S. but did not authorize the rest. The defendant allegedly pre-sold the unauthorized wine to U.S. purchasers at a discount anyway, which the plaintiff claimed violated its trademark rights.

Under the “first sale” doctrine, a product sold without the mark holder’s authorization is deemed non-genuine for Lanham Act purposes. After that first sale, however, the trademark holder may establish infringement only if it demonstrates that the goods are materially different.

The district court believed that Ninth Circuit precedent required it to find the unauthorized first sale of the trademarked wine, without more, did not constitute per se trademark infringement. Since the plaintiff could not show the unauthorized wine was materially different from the authorized wine, the district court denied plaintiff’s motion for preliminary injunction. The Ninth Circuit vacated that decision and remanded it to the district court, finding whether an unauthorized first sale constituted per se infringement in the Ninth Circuit remains an open question.