Vittoria North America, L.L.C. v. Euro-Asia Imports, Inc.

In 1992, a US company called Hibdon Tire Center and an Italian company called Vittoria, S.p.A. (Vittoria Italy) entered into an agreement to form Vittoria North America, L.L.C. (VNA) (plaintiff). This agreement made VNA the exclusive US distributor of Vittoria Italy’s premium bicycle tires. In February 1999, Vittoria Italy assigned to VNA its ownership of the Vittoria trademark, purporting to transfer to VNA both the mark and its associated goodwill. VNA advertised its tires in the high-end market, sponsored professional bicyclists, visited trade shows, and cultivated a network of sales representatives who promoted the tires as premium racing gear. After the assignment agreement was executed, VNA sued Euro-Asia Imports, Inc. (EAI) (defendant) for importing Vittoria-branded tires into the US in contravention of 19 U.S.C. § 1526 (the Tariff Act), which prohibited the importation of foreign goods bearing trademarks owned by US entities without those entities’ permissions. VNA sought an injunction. The district court granted VNA summary judgment and issued an injunction against further importation of Vittoria-branded goods by EAI. EAI appealed, arguing that VNA could not claim protection under the Tariff Act because it did not own the Vittoria mark. EAI’s assertion that VNA did not own the mark was based on the claim that the assignment of the trademark from Vittoria Italy was invalid for failing to include the mark’s associated goodwill.