United States v. Able Time, Inc. ( 2008 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
UNITED STATES OF AMERICA, 
Plaintiff-Appellant, No. 06-56033
v.
 D.C. No.
CV-04-02695-RMT
ABLE TIME, INC., a California
corporation, OPINION
Defendant-Appellee.

Appeal from the United States District Court
for the Central District of California
Robert M. Takasugi, District Judge, Presiding
Argued and Submitted
February 15, 2008—Pasadena, California
Filed September 25, 2008
Before: Stephen S. Trott, Richard R. Clifton, and
Consuelo M. Callahan, Circuit Judges.
Opinion by Judge Clifton
13651
13656 UNITED STATES v. ABLE TIME, INC.
COUNSEL
Charles E. Mullins (argued), United States Nuclear Regula-
tory Commission, Rockville, Maryland, and Anthony Stein-
meyer, Department of Justice, Washington, D.C. for the
plaintiff-appellant.
Elon A. Pollack (argued), Stein Shostak Shostak Pollack &
O’Hara, Los Angeles, California, and Phyllis G. Pollack, Law
Offices of Phyllis G. Pollack, Los Angeles, California for the
defendant-appellee Able Time, Inc.
OPINION
CLIFTON, Circuit Judge:
Able Time, Inc. imported a shipment of watches into the
United States. The watches bore the mark “TOMMY,” which
is a registered trademark owned by Tommy Hilfiger Licens-
ing, Inc. The Bureau of Customs and Border Protection seized
the watches pursuant to the Tariff Act, which authorizes sei-
zure of any “merchandise bearing a counterfeit mark.” 19
U.S.C. § 1526(e). Tommy Hilfiger did not make or sell
watches at the time of the seizure. Customs later imposed a
civil penalty upon Able Time pursuant to 19 U.S.C. § 1526(f),
which authorizes the imposition of a fine upon any person
who imports merchandise that is seized under § 1526(e).1 The
1
The Tariff Act provides as follows:
UNITED STATES v. ABLE TIME, INC. 13657
district court concluded that, because Tommy Hilfiger did not
make watches at the time of the seizure, the watches imported
by Able Time were not counterfeit, and the civil penalty
imposed by Customs was unlawful.
The government argues that the Tariff Act does not require
the owner of the registered mark to make the same type of
goods as those bearing the offending mark. The government
acknowledges that such a requirement is commonplace in
many related trademark statutes but maintains that Congress
did not intend to include such a requirement—known as an
“identity of goods or services” requirement—in the Tariff
Act. Able Time responds by arguing that Congress expressed
its intent to require identity of goods in related statutes and
legislative history.
(e) Merchandise bearing counterfeit mark; seizure and forfeiture;
disposition of seized goods
Any such merchandise bearing a counterfeit mark (within the
meaning of section 1127 of Title 15) imported into the United
States in violation of the provisions of section 1124 of Title 15,
shall be seized and, in the absence of the written consent of the
trademark owner, forfeited for violations of the customs laws.
....
(f) Civil Penalties
(1) Any person who directs, assists financially or otherwise,
or aids and abets the importation of merchandise for sale or
public distribution that is seized under subsection (e) of this
section shall be subject to a civil fine.
(2) For the first such seizure, the fine shall be not more than
the value that the merchandise would have had if it were
genuine, according to the manufacturer’s suggested retail
price, determined under regulations promulgated by the Sec-
retary.
19 U.S.C. § 1526. “Any such merchandise” refers to merchandise of for-
eign manufacture bearing a registered trademark owned by a U.S. citizen
or corporation. 19 U.S.C. § 1526(a).
13658 UNITED STATES v. ABLE TIME, INC.
We conclude that the Tariff Act does not contain an iden-
tity of goods or services requirement. We hold that Customs
may impose a civil penalty pursuant to 19 U.S.C. § 1526(f)
upon an importer of merchandise bearing a counterfeit mark,
even though the owner of the registered mark does not manu-
facture or sell the same type of merchandise. We reverse the
district court’s order granting Able Time’s motion for sum-
mary judgment and remand for further proceedings.
I. Background
Tommy Hilfiger registered the trademark “TOMMY” in
International Class 3, which encompasses cosmetics, cologne
and similar products, in September 1996. Customs seized a
shipment of watches imported by Able Time bearing the mark
“TOMMY” on May 7, 1999. At the time, Tommy Hilfiger
did not manufacture or sell watches, nor was its mark regis-
tered in International Class 14, the class that includes
watches. Tommy applied for registration in that class on
November 30, 1999, and received it on September 17, 2002.
Tommy Hilfiger currently sells watches with the “TOMMY”
mark.
A. The Forfeiture Action
Customs filed an in rem forfeiture action against the
watches pursuant to 19 U.S.C. § 1526(e) on November 3,
2000. The district court granted Able Time’s motion for
judgment on the pleadings on September 24, 2002. The gov-
ernment appealed, and we vacated the district court’s judg-
ment and remanded for further proceedings. See United States
v. 2,164 Watches, 366 F.3d 767 (9th Cir. 2004). The district
court dismissed the forfeiture suit without prejudice for defec-
tive service of process on September 9, 2004. The govern-
ment was unable to re-file the forfeiture suit because the
statute of limitations had run. It returned nearly all of the
watches to Able Time on April 8, 2005.
UNITED STATES v. ABLE TIME, INC. 13659
B. The Civil Penalty Action
Customs issued Able Time several notices of civil penalty
in February and March of 2004. Customs filed this civil pen-
alty action pursuant to 19 U.S.C. § 1526(f) on April 15, 2004.
Able Time filed a motion for summary judgment which the
district court initially denied, concluding that jurors could rea-
sonably return a verdict for the government that the watches
bore a counterfeit mark. The district court subsequently issued
sua sponte an order to show cause why it should not recon-
sider its decision. After further briefing, the district court
granted Able Time’s motion for summary judgment, conclud-
ing as a matter of law that the imported watches could not be
counterfeit because Tommy Hilfiger did not make watches at
the time of the seizure. The government timely appealed.
II. Discussion
We have jurisdiction pursuant to 28 U.S.C. § 1291. “We
review a grant of summary judgment de novo.” Universal
Health Servs., Inc. v. Thompson, 363 F.3d 1013, 1019 (9th
Cir. 2004). “The district court’s interpretation of a statute is
a question of law also subject to de novo review.” Beeman v.
TDI Managed Care Servs., Inc., 449 F.3d 1035, 1038 (9th
Cir. 2006). We first consider whether this case is moot, which
is an issue subject to de novo review that the parties may raise
at any time. S. Or. Barter Fair v. Jackson County, 372 F.3d
1128, 1133 & n.8 (9th Cir. 2004).
A. Mootness
Able Time argues that this case is moot because Customs
has returned nearly all the watches. A case becomes moot
when there no longer exists a “present controversy as to
which effective relief can be granted.” Vill. of Gambell v.
Babbitt, 999 F.2d 403, 406 (9th Cir. 1993) (internal quotation
omitted).
13660 UNITED STATES v. ABLE TIME, INC.
[1] This action is not moot because the civil penalty remedy
is still available. See Friends of the Earth v. Laidlaw Envtl.
Servs. (TOC), Inc., 528 U.S. 167, 192-93 (2000) (reasoning
that the availability of civil penalties rendered the case not
moot); Ecological Rights Found. v. Pac. Lumber Co., 230
F.3d 1141, 1153 (9th Cir. 2000) (same). The provision that
authorizes civil penalties, 19 U.S.C. § 1526(f), does not
require Customs to retain possession of the offending mer-
chandise during the pendency of a civil penalty suit, nor does
it require Customs to successfully attain forfeiture of the mer-
chandise. Subsection (f) requires only that the merchandise be
“seized under subsection (e),” which it was. 19 U.S.C.
§ 1526(f). If the forfeiture action in this case had been dis-
missed with prejudice, or if Able Time were to show that the
seizure was otherwise invalid, then a civil penalty would not
be appropriate. But the forfeiture action here was dismissed
without prejudice, and Able Time has not shown that the sei-
zure was unlawful. Accordingly, the civil penalty remedy is
still available and the case is not moot.
B. Relevant Statutes
We turn next to the language of the relevant statutes. See
Consumer Prod. Safety Comm’n v. GTE Sylvania, Inc., 447
U.S. 102, 108 (1980) (“[T]he starting point for interpreting a
statute is the language of the statute itself. Absent a clearly
expressed legislative intention to the contrary, that language
must ordinarily be regarded as conclusive.”). The government
argues that the Tariff Act and the statutes that it incorporates
do not require the owner of the trademark to manufacture the
same goods as those bearing the offending mark. The govern-
ment argues in the alternative that the agency’s interpretation
is entitled to deference under Chevron U.S.A., Inc. v. Natural
Resources Defense Council, Inc., 467 U.S. 837, 843 (1984),
a position we decline to adopt and discuss below at 25-26.
Able Time responds by arguing that other sources, such as
other statutory language and legislative history, show Con-
gress’s intent to require identity of goods or services in the
UNITED STATES v. ABLE TIME, INC. 13661
Tariff Act. We conclude that the plain language is unambigu-
ous and does not contain an identity of goods or services
requirement. On remand, the district court will consider
whether the other requirements of the Tariff Act have been
met.
[2] The Tariff Act prohibits the importation of merchandise
bearing a registered trademark without the permission of the
owner of the trademark:
[I]t shall be unlawful to import into the United States
any merchandise of foreign manufacture if such mer-
chandise . . . bears a trademark owned by a citizen
of, or by a corporation or association created or orga-
nized within, the United States . . . unless written
consent of the owner of such trademark is produced.
19 U.S.C. § 1526(a). The Tariff Act also authorizes seizure
and forfeiture if the merchandise bears a counterfeit mark:
Any such merchandise bearing a counterfeit mark
(within the meaning of section 1127 of Title 15)
imported into the United States in violation of the
provisions of section 1124 of Title 15, shall be
seized and, in the absence of the written consent of
the trademark owner, forfeited for violations of the
customs laws.
19 U.S.C. § 1526(e). The Tariff Act authorizes the imposition
of a civil penalty upon an importer whose goods are seized,
in an amount not more than the value the merchandise would
have had if it were genuine:
(1) Any person who directs, assists financially or
otherwise, or aids and abets the importation of mer-
chandise for sale or public distribution that is seized
under subsection (e) of this section shall be subject
to a civil fine.
13662 UNITED STATES v. ABLE TIME, INC.
(2) For the first such seizure, the fine shall be not
more than the value that the merchandise would have
had if it were genuine, according to the manufactur-
er’s suggested retail price, determined under regula-
tions promulgated by the Secretary.
19 U.S.C. § 1526(f). None of these provisions require the
owner of the registered mark to make or sell the same goods
as those bearing the offending mark.
[3] Subsection (e) of the Tariff Act incorporates two other
statutes, 15 U.S.C. § 1127 and 15 U.S.C. § 1124. Both are
part of the Trademark Act of 1946, known as the Lanham
Act, and neither contains an identity of goods or services
requirement. The Tariff Act incorporates the definition of the
term “counterfeit” from the first statute: “A ‘counterfeit’ is a
spurious mark which is identical with, or substantially indis-
tinguishable from, a registered mark.” 15 U.S.C. § 1127. Able
Time argues that 15 U.S.C. § 1127 also defines other terms,
such as “trademark” and “use in commerce,” that do contain
an identity of goods or services requirement. The Tariff Act
incorporates only the definition of “counterfeit.” Other defini-
tions contained in 15 U.S.C. § 1127 are not at issue here.
[4] The Tariff Act incorporates from the second statute the
requirement that the offending merchandise “copy or simu-
late” a registered trademark, which amounts to a requirement
that the offending merchandise be likely to cause confusion.
The second statute provides: “[N]o article of imported mer-
chandise . . . which shall copy or simulate a trademark regis-
tered in accordance with the provisions of this chapter . . .
shall be admitted to entry at any customhouse of the United
States . . . .” 15 U.S.C. § 1124. Customs has defined a “copy-
ing or simulating” trademark as “one which may so resemble
a recorded mark or name as to be likely to cause the public
to associate the copying or simulating mark or name with the
recorded mark or name.” 19 C.F.R. § 133.22(a). This is equiv-
alent to the traditional “likelihood of confusion” test for trade-
UNITED STATES v. ABLE TIME, INC. 13663
mark infringement. See Ross Cosmetics Distrib. Ctrs., Inc. v.
United States (“Ross I”), 17 C.I.T. 814, 817-18 (1993) (equat-
ing the “copy or simulate” requirement from 15 U.S.C.
§ 1124 with the likelihood of confusion standard); Ross Cos-
metics Distrib. Ctrs., Inc. v. United States (“Ross II”), 18
C.I.T. 979, 984-85 (1994) (same); 5 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 29:37
(4th ed. 2007) [hereinafter McCarthy] (“[The] ‘copy or simu-
late’ . . . test is the same as that used to determine the
infringement of a federally registered mark in ordinary litiga-
tion.”); see also AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,
348-49 (9th Cir. 1979) (listing factors relevant to likelihood
of confusion analysis, including the strength of the mark, the
proximity of the goods, and the similarity of the marks,
among others), abrogated on other grounds by New Kids on
the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 308-09 (9th
Cir. 1992). While public confusion may be more likely where
the owner of the registered mark manufactures the same
goods as those bearing the offending mark, identity of goods
or services is not a requirement, particularly where the other
factors weigh in favor of finding confusion.
[5] To run afoul of the civil penalty provision of the Tariff
Act, then, the offending merchandise must bear a mark identi-
cal to or substantially indistinguishable from a registered
trademark owned by a United States citizen or corporation,
where the offending merchandise copies or simulates the reg-
istered trademark, meaning that it is likely to cause the public
to associate the offending merchandise with the registered
trademark under the Sleekcraft factors. See 19 U.S.C.
§ 1526(e)-(f); 15 U.S.C. §§ 1124, 1127; 19 C.F.R.
§ 133.22(a). Nowhere does this statutory scheme require the
owner of the registered mark to make the same goods as those
bearing the offending mark.
[6] Able Time argues that the reference to “genuine” mer-
chandise and its retail price in 19 U.S.C. § 1526(f)(2), quoted
above at 8, shows that Congress intended a civil penalty to
13664 UNITED STATES v. ABLE TIME, INC.
apply only where there is, in fact, a genuine article with which
to compare the merchandise bearing a counterfeit mark, i.e.,
where the owner of the registered mark manufactures the
same goods as those bearing the offending mark. The refer-
ence to “genuine” goods does not establish such a require-
ment, however, because the provision in which it appears
affects the calculation of the civil penalty, not the initial deter-
mination of whether a penalty should apply. This language at
best implies that the drafters did not anticipate the specific cir-
cumstances of the instant case, not that they intended the civil
penalty to be limited to cases involving identity of goods or
services. And on its face, the language of 19 U.S.C.
§ 1526(f)(2) does not require the genuine merchandise to be
manufactured by the trademark owner. Here, the term “genu-
ine” could refer to genuine name-brand watches generally.
[7] Able Time makes the related argument that it is impos-
sible to calculate the fine in the manner required by
§ 1526(f)(2), since there can be no retail price for genuine
Tommy watches if genuine Tommy watches did not exist at
the time. Able Time argues that this impossibility shows that
Congress intended to require the owner of the registered mark
to manufacture the same goods as those bearing the offending
mark. We disagree. The Tariff Act specifies that the fine must
be no more than the manufacturer’s suggested retail price that
the merchandise would have had if it were genuine. The legis-
lative history of § 1526(f)(2) provides that the fine should be
“meted out at the discretion of the U.S. Customs Service,
within the boundaries set out by Congress in the bill.” S. Rep.
No. 104-177, at 6 (1995). In this case, Customs acted within
its discretion when it used the “domestic value” of the mer-
chandise as an approximation in accordance with a Customs
directive applicable in similar circumstances.2
2
Domestic value is the estimated price an importer will charge a whole-
sale purchaser. Because retailers must charge more than the wholesale
price in order to make a profit, Customs reasonably assumed that the
domestic value of the watches would be less than their retail price. In this
UNITED STATES v. ABLE TIME, INC. 13665
C. Congressional Intent
In order to overcome this plain language, Able Time must
identify a “clearly expressed legislative intention to the con-
trary.” GTE Sylvania, Inc., 447 U.S. at 108. Able Time argues
that the presence of an identity of goods or services require-
ment in related statutes and legislative history shows Con-
gress’s intent to require identity of goods or services in the
Tariff Act. We disagree. The plain language of the Tariff Act
is unambiguous, so related statutes are of limited help. The
sequence of enactments of and amendments to the relevant
statutes strongly supports the inference that the omission of an
identity of goods or services requirement from the Tariff Act
was intentional. And the legislative histories of the statutes at
issue, and of related statutes, support the plain text interpreta-
tion.
1. The Lanham Act
[8] Able Time argues that numerous portions of the Lan-
ham Act contain an identity of goods or services requirement,
see, e.g., 15 U.S.C. §§ 1051(a)(1), 1057(b), 1058(b),
1114(1)(a), 1115(a), and 1116(d)(1)(B)(i), and that we should
read the Tariff Act consistently with the Lanham Act because
they are related statutes. The principle that related statutes
should be interpreted harmoniously applies only where the
plain language of the statute at issue is ambiguous. See Jonah
R. v. Carmona, 446 F.3d 1000, 1005, 1007 (9th Cir. 2006)
(quoting Jett v. Dallas Indep. Sch. Dist., 491 U.S. 701, 738-39
case, Customs approximated the price Able Time paid the manufacturer,
the expense of bringing the watches to the United States, and a markup for
Able Time’s estimated profit in selling the watches to a wholesaler. The
domestic value determined by Customs in this case is $11.78 per watch.
If the district court on remand upholds the imposition of a civil penalty
here, it may consider any challenge to this calculation and may set the
amount of the civil penalty as it sees fit in accordance with 19 U.S.C.
§ 1526(f).
13666 UNITED STATES v. ABLE TIME, INC.
(1989) (“[W]here text permits, statutes dealing with similar
subjects should be interpreted harmoniously.”) (emphasis
added) (Scalia, J., concurring)). The statutory provisions cited
by Able Time are not at issue here. The plain language of the
statutes that are at issue is unambiguous and does not require
Tommy Hilfiger to have manufactured watches at the time of
the seizure for a civil penalty to be imposed. And the presence
of an identity of goods and services requirement in related
statutes does not constitute a clearly established legislative
intention to include a similar requirement in the Tariff Act.
2. Sequence of Statutory Enactments
Congress has shown more than once that it is able to
impose an identity of goods or services requirement when it
wishes by saying so explicitly in the relevant statutory text.
Congress enacted the definition of “counterfeit” in 15 U.S.C.
§ 1127, at issue here and discussed above, in the Lanham Act
in 1946. Congress created the seizure and forfeiture provision
of the Tariff Act, 19 U.S.C. § 1526(e), also discussed above,
in the Customs Procedural Reform and Simplification Act of
1978 (the “1978 Act”), Pub. L. No. 95-410, 92 Stat 888. Con-
gress created criminal and civil provisions that contain an
explicit identity of goods or services requirement in the
Trademark Counterfeiting Act of 1984 (the “1984 Act”), ch.
XV, §§ 1501-03, Pub. L. No. 98-473, H. R. J. Res. 648
(1984), 98 Stat. 2178.3 The 1984 Act also amended portions
3
The criminal provision of the 1984 Act penalizes “[w]hoever intention-
ally traffics or attempts to traffic in goods or services and knowingly uses
a counterfeit mark on or in connection with such goods or services.” 98
Stat. 2178 (1984) (codified at 18 U.S.C. § 2320(a) (2008)) (emphasis
added). The criminal provision originally defined “counterfeit mark” as “a
spurious mark . . . used in connection with trafficking in goods or services
. . . that is identical with, or substantially indistinguishable from, a mark
registered for those goods or services . . . .” 98 Stat. 2178, 2179 (1984)
(codified at 18 U.S.C. § 2320(d)(1)(A) (2006)) (emphasis added). The
civil provision created by the 1984 Act defines a “counterfeit mark” as a
“counterfeit of a mark that is registered . . . for such goods or services
sold, offered for sale, or distributed and that is in use.” 98 Stat. 2178, 2180
(1984) (codified at 15 U.S.C. § 1116(d)(1)(B)(i) (2008)) (emphasis
added).
UNITED STATES v. ABLE TIME, INC. 13667
of the Lanham Act, but it did not alter the definition of “coun-
terfeit” in 15 U.S.C. § 1127, nor did it add an identity of
goods or services requirement to the seizure and forfeiture
provision, 19 U.S.C. § 1526(e).
Congress created the civil penalty provision of the Tariff
Act discussed above, 19 U.S.C. § 1526(f), in 1996 as part of
the Anticounterfeiting Consumer Protection Act (“ACPA”),
Pub. L. No. 104-153, 110 Stat. 1386. In 2006, Congress
amended the language in the criminal provision’s definition of
“counterfeit mark” to make the identity of goods or services
requirement even clearer.4 Once again, it did not change the
definition of “counterfeit” in 15 U.S.C. § 1127, nor did it add
an identity of goods or services requirement to the provisions
of Tariff Act at issue here, 19 U.S.C. § 1526(e) and (f).
[9] That Congress included an explicit identity of goods or
services requirement in both the civil and criminal provisions
of the 1984 Act, amended the Lanham Act in 1984, amended
the Tariff Act in 1996, and then clarified the requirement in
the criminal provision of the 1984 Act in 2006, but never
added such a requirement to the provisions of the Tariff Act
and Lanham Act at issue here, supports the inference that the
omission of such a requirement from those provisions was
intentional. See Beach v. Ocwen Fed. Bank, 523 U.S. 410,
418 (1998) (“[W]here Congress includes particular language
in one section of a statute but omits it in another section of the
same Act, it is generally presumed that Congress acts inten-
tionally and purposely in the disparate inclusion or exclu-
sion.”) (internal quotation and citations omitted). Congress
4
As amended by the Stop Counterfeiting in Manufactured Goods Act,
the criminal provision of the 1984 Act now defines a “counterfeit mark”
as “a spurious mark . . . used in connection with trafficking in any goods
[or] services . . . that is identical with, or substantially indistinguishable
from, a mark registered . . . and in use . . . that is applied to or used in con-
nection with the goods or services for which the mark is registered.” Pub.
L. No. 109-181, 120 Stat. 285, 286-87 (2006) (codified at 18 U.S.C.
§ 2320(e)(1)(A) (2008)) (emphasis added).
13668 UNITED STATES v. ABLE TIME, INC.
may have wanted to apply a more restrictive definition in the
context of criminal suits and civil actions by self-interested
private plaintiffs than in penalty suits brought by the govern-
ment. Whatever its reasons, Congress simply did not include
an identity of goods or services requirement in the definition
of “counterfeit” contained in 15 U.S.C. § 1127.
3. The Legislative Histories of 19 U.S.C. § 1526(e) and
(f)
Congress enacted the civil penalty provision, 19 U.S.C.
§ 1526(f), in the ACPA in 1996. The legislative history of the
ACPA demonstrates that Congress intended to protect con-
sumers who unwittingly purchase “counterfeit products”
because such products “are rarely of the same quality as the
genuine article,” because consumers may blame the owner of
the registered mark for their shoddy purchases, and because
consumers may suffer harm when substandard products fail.
H.R. Rep. No. 104-556, at 1-4 (1996), reprinted in 1996
U.S.C.C.A.N. 1074, 1074-77. Able Time argues that this leg-
islative history shows that Congress was thinking in terms of
counterfeit goods, not counterfeit trademarks separate and
apart from the products on which they appear. Able Time
argues that this requires reading an identity of goods and ser-
vices requirement into the Tariff Act.
[10] The references to “counterfeit products” and the “gen-
uine article” in the legislative history of § 1526(f) do not con-
stitute the sort of “clearly expressed legislative intention”
required to overcome plain statutory text. GTE Sylvania, 447
U.S. at 108. The recognition that some cases of counterfeiting
will involve the same goods as those manufactured by the
owner of the registered mark does not mean that all cases
must involve the same goods, particularly in light of plain
statutory language with no such requirement. See 4 McCarthy
§ 25:10 (“Often, counterfeit merchandise is made so as to imi-
tate a well-known product . . . .”) (emphasis added). The ref-
erences to counterfeit products rather than counterfeit marks
UNITED STATES v. ABLE TIME, INC. 13669
appear in a general discussion of the statute, in a section enti-
tled “Background and Need for the Legislation.” H.R. Rep.
No. 104-556, at 1, reprinted in 1996 U.S.C.C.A.N. at 1075.
The passages containing these references do not specifically
discuss the definition of the term “counterfeit,” and they do
not appear intended to define or restrict its meaning. More-
over, applying a civil penalty in the instant case will combat
the very harm identified in the legislative history: it will pro-
tect consumers from being misled into purchasing generic
watches that they mistakenly believe come from Tommy Hil-
figer.
[11] The legislative history of 19 U.S.C. § 1526(e) also
does not undercut the plain text of the Tariff Act. Congress
enacted § 1526(e), the seizure and forfeiture provision, in the
1978 Act. The legislative history of the 1978 Act explains that
the Senate amendment containing what eventually became
§ 1526(e) was intended “solely to strengthen the remedies
available to prevent the importation of merchandise bearing [a
counterfeit] mark.” H.R. Rep. No. 95-1517, at 17 (1978)
(Conf. Rep.), reprinted in 1978 U.S.C.C.A.N. 2249, 2259.5 If
anything, this weighs in favor of construing § 1526(e) to more
broadly prevent the importation of merchandise bearing a
counterfeit mark. The legislative history also refers to coun-
terfeit marks, which shows Congress was not thinking purely
in terms of counterfeit products when it enacted the statute.
5
The legislative history of the § 1526(e) provides:
The House receded from its disagreement with the Senate amend-
ment with amendments to clearly limit the Senate amendment to
merchandise bearing a counterfeit mark as defined in section 45
of the Act of July 5, 1946 (the Lanham Act) [15 U.S.C. § 1127],
as the amendment is intended solely to strengthen the remedies
available to prevent the importation of merchandise bearing such
a mark . . . .
H.R. Rep. No. 1517, at 17 (1978), reprinted in 1978 U.S.C.C.A.N. 2249,
2259.
13670 UNITED STATES v. ABLE TIME, INC.
Accordingly, the legislative histories of § 1526(e) and (f)
tend to support the plain text interpretation. Our review of the
legislative histories of the other statutory provisions directly
at issue reveals nothing to the contrary.
4. The Legislative History of the 1984 Act
[12] Able Time argues that the legislative history of the
1984 Act shows that Congress was attempting to combat
counterfeit products that might cause consumers harm, not
counterfeit marks in isolation. We decline to rely on the legis-
lative history of the 1984 Act, however, because it relates
only to statutory provisions that are not at issue. Accord
United States v. 10,510 Packaged Computer Towers, 152 F.
Supp. 2d 1189, 1199 (N.D. Cal. 2001) (“Aside from the fact
that the cited language [in the legislative history of the 1984
Act] refers to an entirely different statute, its reference is to
a criminal statute.”); see also 2 Anne Gilson LaLonde, Gilson
on Trademarks § 5.19[2][a] at 5-218 & nn. 16-17 (2007)
[hereinafter Gilson] (discussing the civil and criminal provi-
sions of the 1984 Act, not the definition of counterfeit in 15
U.S.C. § 1127).
[13] As discussed above, the 1984 Act established civil and
criminal provisions with definitions of “counterfeit” that
include an express identity of goods or services requirement.
See 15 U.S.C. § 1116(d)(1)(B)(i); 18 U.S.C. § 2320(e)(1)
(A)(iii). Neither of these provisions is at issue. The legislative
history of the 1984 Act warns us that “[u]nless it does so
explicitly, this act does not in any way modify the Lanham
Act or judicial interpretation of it.” Joint Congressional State-
ment on 1984 Trademark Counterfeiting Legislation, 130
Cong. Rec. H12076, H12076 (Oct. 10, 1984) [hereinafter
Joint Statement], reprinted in 7 McCarthy at App. A8-3. It
also recognized that the “Lanham Act relates to ‘marks’ rather
than ‘goods or services’ ” and stated that changing the Lan-
ham Act definition of “counterfeit” to follow the definitions
established by the 1984 Act was “beyond the scope” of the
UNITED STATES v. ABLE TIME, INC. 13671
1984 Act, because the 1984 Act was a “compromise” bill, not
“an overall redrafting of the trademark law.” Joint Statement
at H12076, reprinted in 7 McCarthy at App. A8-3 to A8-4.6
These statements weigh against relying on the legislative his-
tory of the 1984 Act in any context other than the civil and
criminal provisions that it established, neither of which is at
issue.
[14] Two other aspects of the 1984 Act deserve mention.
Its legislative history states that the definitions of “counter-
feit” in the civil and criminal provisions are “identical in sub-
stance.” Joint Statement at H12078, reprinted in 7 McCarthy
at App. A8-9.7 This statement equates the civil provision with
6
The Joint Statement provides:
This key criminal provision represents a compromise between the
Senate and House bills. The Senate bill was drafted to prohibit
“trafficking in counterfeit goods or services,” while the House
bill barred “use of a counterfeit mark” in connection with goods
or services. Both the House and Senate sponsors recognize that
a mark can be “counterfeit” only if it is used in connection with
certain types of goods or services. However, conduct regulated
by the Lanham Act relates to “marks” rather than “goods or ser-
vices”: the sponsors feared that it might create confusion to adopt
the terminology of “counterfeit goods or services” in a piecemeal
fashion. An overall redrafting of the trademark laws is an appro-
priate way to make such changes and is beyond the scope of this
legislation.
Joint Statement at H12076, reprinted in 7 McCarthy at App. A8-3 to A8-
4.
7
The Joint Statement continues:
The proposed act defines “counterfeit mark” in two places—in
the criminal code amendment, proposed 18 U.S.C. 2320(d), and
in the Lanham Act amendment, proposed 15 U.S.C.
1116(d)(1)(B) . . . . For technical reasons, the two definitions of
“counterfeit mark” differ slightly in their terms, but they are iden-
tical in substance. The Lanham Act already contains a definition
of the term “counterfeit”: a “spurious mark which is identical
with, or substantially indistinguishable from, a registered mark.”
15 U.S.C. 1127 [sic]. Because it is part of the Lanham Act, the
definition of “counterfeit mark” contained in proposed subsection
1116(1)(B) incorporates the section 1127 definition.
Joint Statement at H12078, reprinted in 7 McCarthy at App. A8-9.
13672 UNITED STATES v. ABLE TIME, INC.
the criminal provision. It does not equate either of them with
the definition at issue here, which is contained in 15 U.S.C.
§ 1127. It also states that the civil provision’s definition “in-
corporates the section 1127 definition.” Id; accord 2 Gilson
§ 5.19[3][a] at 5-220. It does not state the converse—that the
Section 1127 definition incorporates the civil provision’s defi-
nition. We reject the contrary conclusions of other authorities.
See United States v. 1,234 Watches, No. CV-00 11782, Doc.
No 46, slip op. at 20-21 (C.D. Cal. Jan. 16, 2002) (unpub-
lished) (concluding that watches bearing the mark “TOMMY”
were not subject to forfeiture as counterfeit under 19 U.S.C.
§1526(e) because Tommy Hilfiger did not manufacture
watches or related goods at the time of seizure) (citing 4
McCarthy § 25:15; Playboy Enters. v. Universal Tel-A-Talk
Inc., 48 U.S.P.Q. 2d 1779, 1782 & n.8 (E.D. Pa. 1998)); Ross
II, 18 C.I.T. at 986.
We decline to narrow the definition of counterfeit con-
tained in 15 U.S.C. § 1127 beyond its plain meaning simply
because much of the litigation and academic discussion
regarding counterfeit goods arises in the context of the civil
and criminal provisions of the 1984 Act, statutes that are not
at issue here.
D. “Right in Gross”
[15] The district court granted summary judgment to Able
Time in large part because it believed that the government’s
interpretation ran afoul of the principle that a trademark is not
a “right in gross.” See 4 McCarthy § 24:11. This principle
holds that a registered trademark can be used by someone
other than its owner so long as the use does not confuse the
public, because trademarks are tied to their use on products
and do not exist in the abstract. See id. The statutory scheme
at issue here sufficiently connects the marks and the goods on
which they are used. The offending merchandise must “copy
or simulate” a registered mark, 15 U.S.C. § 1124, which
means that the watches must be likely to cause confusion in
UNITED STATES v. ABLE TIME, INC. 13673
order for a civil penalty to apply. See 19 C.F.R. § 133.22(a);
supra Part II.B. This requirement prevents a step backwards
towards a “right in gross” theory of trademark because it
requires the owner to use the registered mark. If the owner did
not use the mark, then the public would be unlikely to confuse
it with the offending mark. Accordingly, even under the gov-
ernment’s theory of the case, a trademark is still a “right
appurtenant to an established business or trade in connection
with which the mark is employed,” not a “right in gross or at
large.” United Drug Co. v. Theodore Rectanus Co., 248 U.S.
90, 97 (1918).
E. Chevron Deference
[16] Because the statutes at issue are not ambiguous, we
decide this case without giving deference to the government
agency. See Chevron, 467 U.S. 837, 843 (1984). But even if
the statutes were ambiguous, Customs would not be entitled
to Chevron deference because its position is not the product
of sufficiently careful, consistent, or formal procedures “tend-
ing to foster the fairness and deliberation that should underlie
a pronouncement of [legal] force.” See United States v. Mead
Corp., 533 U.S. 218, 228, 230 (2001). Customs has not
pointed to any regulation, ruling, directive, notice, or other
agency determination that formally resolves—or even directly
addresses—whether the statutes at issue require an identity of
goods or services. The regulations upon which Customs relies
track the language of the applicable statutes. See 19 C.F.R.
§§ 133.21, 133.27. If the statutes were ambiguous, the regula-
tions would be just as ambiguous. Customs is merely advanc-
ing a litigation position. See United States v. Trident Seafoods
Corp., 60 F.3d 556, 559 (9th Cir. 1995) (“No deference is
owed when an agency has not formulated an official interpre-
tation of its regulation, but is merely advancing a litigation
position.”); accord Rhodes-Bradford v. Keisler, 507 F.3d 77,
80 (2d Cir. 2007). Accordingly, Customs’s position is due no
Chevron deference.
13674 UNITED STATES v. ABLE TIME, INC.
F. Remand
[17] We remand for the district court to determine whether
(1) the mark on the watches is identical to or substantially
indistinguishable from the registered mark pursuant to 15
U.S.C. § 1127, and (2) whether the offending mark copies or
simulates the registered mark pursuant to 15 U.S.C. § 1124,
which amounts to the traditional likelihood of confusion test
for infringement. See supra Part II.B.
[18] Able Time repeatedly cites Montres Rolex, S.A., v.
Snyder, 718 F.2d 524, 532 (2d Cir. 1983), for the proposition
that Customs must compare the registered mark as it appears
on actual merchandise with the allegedly counterfeit mark on
the watches. Montres Rolex does not stand for this proposi-
tion. While comparing actual products is preferred, Montres
Rolex explicitly provided that a comparison to the registration
information alone could be sufficient. Id. (“We see no reason
why a trademark owner would not eagerly cooperate with
Customs [by providing product samples with authentic
marks], and even if the owner failed to do so after receiving
notice of the seizure, Customs could still make its determina-
tion based on the mark as registered.”). While Montres Rolex
rejected a comparison to the registration information in that
particular case, it did not establish a categorical rule. On
remand, the factfinder may compare the offending mark to the
mark on the registration certificate, or the district court may
admit additional product samples bearing the registered mark
into evidence.
III. Conclusion
We hold that Customs may impose a civil penalty pursuant
to 19 U.S.C. § 1526(f) upon an importer of merchandise bear-
ing a counterfeit mark, even though the owner of the regis-
tered mark does not manufacture the same type of
merchandise.
REVERSED and REMANDED.