Extraterritorial Reach of Lanham Act and Protection of IP Rights: Pursuing Foreign Infringers

Description

As companies expand their reach outside the U.S. border, there are questions about the circumstances for applying the Lanham Act to conduct outside the U.S. The Lanham Act’s extraterritorial reach gives IP rights holders a path to pursue alleged foreign infringers in U.S. courts.

The Supreme Court denied certiorari in Belmora L.L.C. v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016), cert. denied (U.S. Feb. 27, 2017). The Court thus left in place the Fourth Circuit’s decision that a plaintiff who owns a trademark outside of the U.S. has standing to sue under Lanham Act §§14(3) and 43(a) for the unauthorized use of a foreign brand that the plaintiff never used in the United States. Foreign trademark owners may assert standing under the Lanham Act without proving ownership or use of a trademark in U.S. commerce.

District courts approach the application of the Lanham Act differently. In International Diamond Importers Inc. d/b/a I.D.I. Design Inc. v. Med Art Inc., (S.D.N.Y. 2017), the district court examined the extraterritorial applicability under the three-factor test articulated in Vanity Fair Mills Inc. v. T. Eaton Co. (2d Cir. 1956). The district court in Blumenthal Distributing Inc. d/b/a Office Star v. Herman Miller Inc. (C.D. Cal. 2017) applied a different three-part test. Under the third part, the court provided seven factors to consider when assessing the application.

Listen as our authoritative panel of IP attorneys discusses the Lanham Act’s extraterritorial reach and how the courts have treated these cases. The presenters will also discuss how IP owners can use the Lanham Act to protect those rights.