## Facts

- Vittoria S.p.A., an Italian manufacturer of bicycle tires, and a U.S. company formed Vittoria North America, L.L.C. (VNA) in 1992.
- VNA served as the exclusive U.S. distributor of Vittoria-branded high-end bicycle tires and developed U.S. market recognition through advertising, athlete sponsorships, trade shows, and a sales network.
- In 1999, Vittoria S.p.A. executed a written assignment transferring to VNA ownership of the “Vittoria” trademark in the United States, including associated goodwill.
- Euro-Asia Imports, Inc. (EAI) bought Vittoria-branded tires abroad and imported them into the United States without VNA’s consent.
- VNA sued under § 526 of the Tariff Act (19 U.S.C. § 1526), seeking to stop unauthorized importation of foreign-manufactured goods bearing a U.S.-owned trademark.
- The district court granted summary judgment to VNA and enjoined EAI from further unauthorized imports.

## Issues

1. Whether VNA was the “U.S. owner” of the Vittoria trademark for purposes of 19 U.S.C. § 1526 based on the 1999 assignment from the foreign manufacturer.
2. Whether the assignment was invalid as an assignment in gross because it allegedly transferred the mark without the goodwill it symbolized.
3. Whether, if the assignment was valid, VNA met § 1526’s requirements to bar EAI’s gray-market imports absent VNA’s written consent.

## Decision

- The Tenth Circuit affirmed summary judgment and the injunction for VNA.
- The court held the 1999 trademark assignment was valid because it transferred goodwill along with the mark.
- Because VNA validly owned the U.S. trademark and satisfied § 1526’s statutory criteria, it could prevent unauthorized importation of Vittoria-branded tires.

## Legal Principles

- Under trademark law, a mark cannot be validly assigned apart from the goodwill it represents; an assignment in gross is invalid.
- Goodwill may be shown by the assignee’s established market role and activities that create and maintain consumer associations with the mark.
- Under 19 U.S.C. § 1526, importing foreign-manufactured goods bearing a trademark owned by a U.S. entity is unlawful without the trademark owner’s written consent, assuming statutory registration and related requirements are met.
- A U.S. entity that receives a valid assignment of a foreign mark (including goodwill) can qualify as the U.S. owner entitled to § 1526 gray-market protection.

## Conclusion

The court upheld an injunction barring unauthorized imports, concluding that VNA’s acquisition of the Vittoria U.S. trademark was a valid transfer with goodwill and therefore entitled VNA to Tariff Act protection against gray-market importers lacking its written consent.


Vittoria N. Am., L.L.C. v. Euro-Asia Imps., Inc., 278 F.3d 1076 (10th Cir. 2001)