Knobbe Martens partners Mark Lezama and Jeff Van Hoosear were quoted by multiple media outlets on the Supreme Court case Abitron v. Hetronic International, which concerns the extent to which U.S. trademark law applies when a company uses a mark outside the United States.
The American Lawyer article “Supreme Court Brief: International Trademark” discusses the oral arguments presented in Abitron this week. The Tenth Circuit had affirmed a judgment of more than $90 million in favor of Hetronic, who had accused Abitron, a German company, of infringing its U.S. trademarks. The primary issue before the Supreme Court was whether Abitron could be liable for using those marks in connection with foreign sales—sales made by sellers outside the United States to customers outside the United States. Expressing the views of the United States, the Solicitor General agreed with Abitron that the bulk of the $90+ million judgment could not stand because it was based on an impermissible extraterritorial application of U.S. law. But whereas Abitron argued the analysis should focus on whether sales outside the United States involve a use of the mark in U.S. commerce, the government argued the test should focus on whether a sale abroad results in actual or likely confusion among U.S. consumers, as might occur in connection with products initially sold abroad that eventually make their way into the United States. As the article indicates, both Lezama and Van Hoosear expect the high court to reverse in relevant part and vacate most of the damages, though some justices appeared to favor Abitron’s proposed test over the government’s.
Lezama pointed to comments from certain justices suggesting they saw difficulties in defining the outer limits of the government’s position, saying, “They posed hypotheticals zeroing in on what kind of nexus there must be between a foreign manufacturer’s use of a trademark abroad and confusion in the U.S. before the Lanham Act can apply to the manufacturer’s conduct.”
Van Hoosear stated he thought Abitron’s position was too narrow to protect U.S. marks in a modern global economy, but said that the lower courts “just went too far,” and that the government’s position is “far more appropriate than either Abitron or the 10th Circuit’s positions when it comes to protecting the trademarks of U.S. businesses and protecting U.S. consumers from confusion.”
Lezama was also quoted in the Bloomberg article, “Justices Weigh Trademark Law’s Reach Against Global Commerce,” saying “There appears to be a clear majority in favor of reversing the Tenth Circuit’s judgment in large part and limiting the extraterritorial reach of the Lanham Act.”
Read The American Lawyer article here >> (Subscription required)
Read the Bloomberg article here >> (Subscription required)
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