## Facts

- A French cosmetics manufacturer sold to A. Bourjois & Co., Inc. its United States business, goodwill, and U.S.-registered trademarks for face powder, including “Java” and “Bourjois.”
- After the purchase, A. Bourjois continued the business, re-registered the marks, imported powder from France, and used substantially the same box and label associated with the marks in U.S. commerce.
- A. Bourjois selected colors for the American market, controlled packing and quality, and spent heavily on advertising; the labels came to be understood by U.S. consumers as identifying goods coming from A. Bourjois.
- A. Bourjois’s packaging included a statement indicating the goods were made in France and packed in the United States by A. Bourjois as U.S. successor to the French firm.
- Katzel bought genuine face powder abroad from the French manufacturer and imported it into the United States for resale in French boxes closely resembling A. Bourjois’s packaging, but without the U.S.-successor statement and with minor wording differences.
- A. Bourjois sought to enjoin Katzel for trademark infringement and related trade-dress confusion.

## Issues

1. Whether a U.S. assignee of a foreign manufacturer’s U.S. business, goodwill, and trademarks may enjoin the importation and sale of genuine goods bought abroad from that manufacturer when the imported goods are sold in packaging bearing the same or confusingly similar marks.
2. Whether the genuineness of the goods defeats a claim of infringement where U.S. consumers understand the marks and packaging to indicate the U.S. assignee as the commercial source.

## Decision

- The Supreme Court reversed the court of appeals and reinstated the district court’s preliminary injunction.
- The Court held that Katzel’s sales infringed A. Bourjois’s U.S. trademark rights notwithstanding that the powder was genuine.
- The Court concluded that, after assignment, the foreign manufacturer could not itself use the old marks in U.S. competition with the assignee and could not achieve the same result through third-party imports.
- The Court approved preliminary injunctive relief under the Trade-Mark Act’s equitable remedy provisions.

## Legal Principles

- An assignment of a trademark with the associated U.S. business and goodwill gives the assignee exclusive rights to the mark in U.S. commerce against competitive use that would impair the transferred goodwill.
- The “genuineness” of imported goods is not a complete defense when the marks and packaging used in the United States are likely to cause consumers to attribute the goods’ commercial source to the U.S. trademark owner.
- A prior owner that has transferred U.S. trademark rights cannot reintroduce competition under the transferred marks indirectly through third parties selling goods with the old labels.
- Preliminary injunctions are appropriate where ongoing sales threaten confusion and damage to the trademark owner’s goodwill, consistent with statutory authorization for injunctive relief.

## Conclusion

The Court held that a U.S. trademark assignee may stop gray-market imports of genuine goods when they are sold under the assigned marks and substantially identical packaging in a way that misleads U.S. consumers about source and undermines the goodwill purchased with the trademarks.


A. Bourjois & Co. v. Katzel, 260 U.S. 689 (1923)