. . . And Your Name Is? Court Orders Anonymous Parallel Importer To Reveal Itself In “Lever Rule” Trademark Challenge

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition

Foley Hoag LLP - Trademark, Copyright & Unfair Competition

We recently hosted an event at the firm where we discussed legal issues concerning parallel imports in the transportation industry, so a recent decision by the U.S. Court of International Trade discussing “Lever Rule” protection caught my attention.  To those who do not traffic in the world of parallel imports, the Lever Rule is a tool available to trademark owners to limit unauthorized imports of gray market goods bearing the owner’s mark.  Gray market goods are goods that the trademark owner has approved for sale and distribution in another jurisdiction (and designed and manufactured to conform to the regulations and laws of that other jurisdiction), but that are brought into the United States for resale here.  The Lever Rule allows a U.S. trademark owner to have U.S. Customs and Border Protection (“CBP”) stop the unauthorized importation of such goods if they are sold under the owner’s trademark and if there are physical and material differences between the unauthorized imported goods and the U.S. goods sold under the same trademark.

In early 2017, battery manufacturer Duracell obtained Lever Rule protection for certain gray market batteries bearing the DURACELL trademark.  This decision was challenged by an anonymous importer of gray market batteries calling itself “XYZ Corporation.”  XYZ sought judicial review before the Court of International Trade while maintaining its anonymity.  When the case first commenced, the only other party was CBP, and CBP did not object to XYZ maintaining the name of the company as confidential.  CBP and XYZ entered into a protective order to allow the parties to designate information as confidential, including a provision for “attorneys’ eyes only” protection.

In July 2017, Duracell moved to intervene in the action as a defendant. The Court granted the motion and added Duracell to the protective order.  About a week after entering into the protective order, Duracell advised XYZ that it objected to designating XYZ’s real company name as “attorneys’ eyes only.”  XYZ resisted and a skirmish ensued.

There were two issues before Judge Choe-Groves: (1) Can XYZ properly identify the company name as confidential information under the protective order; and (2) Can XYZ otherwise maintain anonymity in the proceeding?  XYZ argued that it needed to protect its identity because it feared commercial and legal retaliation from Duracell.  Apparently, XYZ had been importing gray market batteries for twenty-seven years without interference from Duracell, but XYZ nevertheless feared that Duracell would file a trademark infringement suit, bankrupting XYZ and damaging its reputation.

Judge Choe-Groves first determined that company names are not trade secrets or confidential business information of the type covered under the protective order.  The scope of information protected under the protective order included trade secrets, financial data, proprietary business information, and information that the company was obligated to keep confidential by contract obligation or law.  The name of the business itself did not fall into any of the categories in the protective order.

The Court next considered whether to exercise its discretion to allow XYZ to proceed anonymously.  Judge Choe-Groves weighed XYZ’s stated privacy interests against the public’s interest in knowing the facts and events surrounding court proceedings.  The Court noted that avoiding damage to professional reputation or potential financial hardship are not the types of special circumstance that warrant the use of a pseudonym, and held that the public’s interest in disclosure outweighed these concerns. The Court ordered XYZ to refile the complaint without redactions as to its corporate name and the name of its corporate officers.

This decision will be useful to trademark owners who seek these Lever Rule orders, because it will be more difficult for parallel importers to challenge them from the shadows.  In this case, XYZ filed an amended complaint that identified itself as Mile Crest Corp. of Edison, New Jersey.

Author’s disclosure: Judge Choe-Groves and I were law partners together at a prior law firm.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Foley Hoag LLP - Trademark, Copyright & Unfair Competition | Attorney Advertising

Written by:

Foley Hoag LLP - Trademark, Copyright & Unfair Competition

Foley Hoag LLP - Trademark, Copyright & Unfair Competition on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.