## Facts

- Deere & Company owned multiple U.S. trademark registrations covering the JOHN DEERE brand used on self-propelled forage harvesters.
- Deere manufactured forage harvesters for both the U.S. and European markets, including U.S.-made units intended for sale only in Europe.
- Independent U.S. dealers/importers (Bourdeau Bros., Sunova Implement, and OK Enterprises) imported European-version Deere forage harvesters into the United States without Deere’s authorization and resold them.
- Deere claimed the imported European-version harvesters were “gray market” goods that infringed Deere’s U.S. trademarks because they were materially different from the versions authorized for the U.S. market.
- Asserted differences included lighting configurations, warning labels and safety decals, hitch incompatibility with North American wagons, and operator manuals in foreign languages rather than English.
- The ITC, affirming an ALJ’s initial determination, found a violation of § 337 based on trademark infringement and issued a general exclusion order barring importation of the European-version harvesters and cease and desist orders against certain respondents.

## Issues

1. Whether the ITC adequately found that the imported European-version harvesters were materially different from authorized U.S. versions such that their unauthorized importation created a likelihood of confusion and infringed Deere’s U.S. trademarks under a gray-market theory.
2. Whether the ITC’s general exclusion order and cease and desist orders were justified and supported by sufficient findings and evidence.

## Decision

- The Federal Circuit vacated the ITC’s violation determination and the associated remedial orders and remanded for further proceedings.
- The court accepted that non-trivial “material differences” between authorized and unauthorized goods can support gray-market trademark infringement, but held the ITC’s analysis and findings were too conclusory.
- The court required a market-focused showing that the identified differences were material to U.S. purchasers and were tied to a legally sufficient likelihood-of-confusion rationale.
- Because the liability analysis was inadequate, the general exclusion order and cease and desist orders could not stand on the existing findings and record.

## Legal Principles

- Genuine goods made for foreign markets may infringe U.S. trademarks when unauthorized importation involves material differences from authorized domestic versions that are likely to confuse U.S. purchasers or harm the trademark owner’s goodwill.
- A material-difference theory requires specific, evidence-based findings that the differences are meaningful to relevant U.S. purchasers (including in specialized markets where buyers may be sophisticated).
- Likelihood of confusion remains the core trademark inquiry in gray-market cases; differences must be connected to confusion about product nature, qualities, or characteristics, not merely shown to exist.
- A general exclusion order is an exceptional § 337 remedy and requires strong justification and a well-supported record; defects in the infringement analysis undermine such broad relief.

## Conclusion

The Federal Circuit set aside the ITC’s gray-market trademark violation and broad exclusionary relief because the Commission did not adequately explain, with record support, why the European-version harvesters’ differences were material to U.S. purchasers and likely to cause confusion, and it directed the ITC to reassess both liability and any remedy on remand.


Bourdeau Bros., Inc. v. Int'l Trade Comm'n, 444 F.3d 1317 (Fed. Cir. 2006)