and its licensees, as well as subject to quality control
inspections. Sixth Avenue admits that all of its supply of B &
W-marked loudspeakers were purchased, not from B & W-UK, but
from English Discounts, Inc., an American corporation which is
not related to B & W-UK.
There is also a question whether the goods are identical. Among
differences that may be pertinent are the fact that the
defendant's goods did not undergo the inspections designed with
reference to the U.S. market and that defendant's goods may be
covered by a qualitatively different warranty from those
distributed in the U.S. through authorized channels. There may
also be physical differences. The submissions of the parties do
not clarify these issues.
A clear determination of this issue cannot be made on the
present record. A genuine issue of material fact remains as to
whether the plaintiff has proven likelihood of confusion.
Resolution of this issue requires trial. Summary judgment is
3. Tariff Act issues
A branch of defendant's motions for summary judgment seeks a
ruling barring exclusion of defendant's goods by the Customs
Service under the Tariff Act, 19 U.S.C. § 1526. This motion
must be denied for several reasons.
First, to the extent the motion depends on defendant's
contentions attacking plaintiff's ownership of and right to
enforce the B & W marks, these contentions fail for the reasons
Second, as to whether Atkins falls under the "common control"
exception established by the Customs Regulations, 19 C.F.R. §§
133.21(c)(2), 133.2(d)(2), the papers submitted fail to show
that such "common control" is established. It appears from the
plaintiff's submissions that the relationship between B & W-UK
and the Atkins entities arises solely from contracts and that
there is no common ownership or control.
In any event, to the extent defendant is seeking to bar Customs
Service enforcement of its regulation, it appears that such
claims must be raised through administrative proceedings, see
19 U.S.C. § 1514, 1516 and accompanying regulations, with
judicial review available upon exhaustion in the Court of
International Trade. See 28 U.S.C. § 1581, 19 U.S.C. § 1514,
1516; see generally Vivitar, 761 F.2d at 1557-60; Olympus,
792 F.2d at 317-19.
A. Plaintiff's and defendant's motions for summary judgment
dispute many of the same issues. Partial summary judgment is
granted in favor of the plaintiff on the following issues:
(i) plaintiff is the owner of the United States trademarks for
B & W loudspeakers and parts, etc., and may enforce those
rights in the United States;
(ii) plaintiff's registrations of those marks are valid,
subsisting, and uncancelled;
(iii) plaintiff's ownership has become incontestable under
15 U.S.C. § 1065, 1115(b), and
(iv) the assignment of the trademark rights to plaintiff is not
void as a "naked" or "in gross" assignment.
B. Summary judgment is denied with respect to the pertinence of
an exception for genuine goods and to the likelihood of
C. All of defendant's motions for summary judgment are denied.
D. Defendant's motion to dismiss the complaint under Rule
12(b)(6) for failure to state a claim is denied.
E. Defendant's motion for summary judgment that plaintiff has
no standing to assert rights under the Tariff Act is denied.