United States v. Able Time, Inc.

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…