According to Trader Joe’s, this conduct dilutes its trademarks, confuses consumers, and damages Trader Joe’s’ reputation by associating it with highcost, reduced-quality goods. The complaint includes six claims for relief, four of which arise under the Lanham Act and two of which arise under Washington law: (1) federal trademark infringement, 15 U.S.C. § 1114(1); (2) unfair competition, false endorsement, and false designation of origin, 15 U.S.C. § 1125(a)(1)(A); (3) false advertising, 15 U.S.C. § 1125(a)(1)(B); (4) federal trademark dilution, 15 U.S.C. § 1125(c); (5) state trademark dilution, Wash. Rev. Code § 19.77.160; and (6) deceptive business practices in violation of the Washington Consumer Protection Act, Wash. Rev. Code § 19.86.020. Trader Joe’s asked the district court to award it damages and permanently enjoin Hallatt from reselling its goods or using its trademarks in Canada.

This week, we examine a Ninth Circuit decision addressing whether a plaintiff pursuing a Lanham Act counterfeiting claim must demonstrate that consumers were likely to be confused (the answer: yes), and another resolving the tricky issue of whether the federal government’s regulation of a polluted site rendered it liable for the costs of remediating that pollution (the answer of a divided panel: no).ARCONA, INC. v. FARMACY BEAUTY, LLC Resolving an issue of first impression in the Ninth Circuit, the Court holds that the Lanham Act, 15 U.S.C. § 1114, requires plaintiffs to establish a likelihood of confusion for a trademark counterfeiting claim.Panel: Judges Lee, Bumatay, and Molloy (D. Mont.), with Judge Lee writing the opinion.

Bcom, Inc. commenced an action on under a provision of the Anticybersquatting Consumer Protection Act (the "ACPA") that authorizes a domain name owner to seek recovery or restoration of its domain name when a trademark owner has overstepped its authority in causing the domain name to be suspended, disabled, or transferred. See 15 U.S.C. 1114(2)(D)(v) (known as the "reverse domain name hijacking provision"). Resort to the Lanham Act for relief is procedurally proper because the UDRP process is "not intended to interfere with or modify any 'independent resolution' by a court of competent jurisdiction."

On June 29th, the Supreme Court decided whether two provisions of the Lanham Act, specifically 15 U.S.C. § 1114(1)(a) and § 1125(a)(1) protect domestic trademark holders from extraterritorial infringement. The Supreme Court held that the above provisions are not extraterritorial in nature and that they extend only to claims where the claimed infringing use in commerce is domestic. Justice Alito authored the opinion for the Court and Justices Jackson and Sotomayor each filed concurring opinions.Hetronic, based in Oklahoma, manufactures and sells radio remote controls that operate heavy-duty construction equipment. It owns U.S. trademarks for the distinguishing features of its remote controls. Abitron agreed to serve as Hetronic’s distributor in Europe. It was authorized to assemble and sell Hetronic’s remote controls under Hetronic’s brand, but was contractually required to purchase parts from Hetronic.Hetronic alleges that Abitron secretly used confidential information to which it had access under the licensing agreement to reverse-engineer Hetronic’s products; Abitron then sold those products to Het

Arcona argued it didn’t need to show a likelihood of confusion because two sections of the Lanham Act – 15 U.S.C. §§ 1116(d) and 1117 – that establish remedies for counterfeiting do not specifically mention “likelihood of confusion.”The Ninth Circuit rejected this argument because both of the statutory sections cited by Arcona refer back to a civil action under 15 U.S.C. § 1114, and the plain language of 15 U.S.C. § 1114, which addresses both trademark infringement and counterfeiting, requires a showing of “likely to cause confusion.” Although the Ninth Circuit had not yet expressly held a counterfeiting claim to require a showing of likelihood of confusion, the Court found that a counterfeiting claim should be construed the same as an infringement claim under 15 U.S.C. § 1114, which requires a likelihood of confusion.Arcona’s alternative argument – that the district court erred in not presuming a likelihood of confusion based on Farmacy’s use of an identical mark – was rejected by the Ninth Circuit because “there may be no presumption of consumer confusion if the products themselves are not identical.”

This week in Romag Fasteners, Inc. v. Fossil Group, Inc., the Supreme Court changed the landscape for trademark litigation damage awards and resolved a split in Circuit Courts of Appeal when it held “ [a] plaintiff in a trademark infringement suit [under 15 U.S.C § 1125(a)] is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award”In general, the infringement of a registered trademark is prohibited under 15 U.S.C § 1114, whereas, the infringement of an unregistered or common law trademark and other acts of unfair competition are prohibited by 15 U.S.C § 1125(a). Both statutes effectively require the same finding of confusing similarity between a plaintiff’s mark and whatever the defendant is using to establish liability.Plaintiffs with trademark registrations may bring actions under both statutes, as they are not mutually exclusive, but often do not favoring 15 U.S.C § 1114 because of the additional remedies that may be available, namely, the attorney’s fees and potential for treble damages in exceptional cases.

The Fourth Circuit reversed in part and affirmed in part. It found that although the district court did have jurisdiction over the claim against NSI, its dismissal of the claim was nonetheless proper because the plaintiff failed to allege all of the required elements of his claim. (The Anticybersquatting amendments to the Lanham Act generally prohibit suits against registrars like NSI unless the plaintiff can show that one of three exceptions to the limitation of liability granted by 15 U.S.C. 1114(2)(D)(i) applies. The failure to meet the elements was a 12(b)(6) issue, not a jurisdictional issue, the court found).

cuit joined the U.S. Courts of Appeals for the First, Second, Fourth, Fifth, Ninth, Eleventh, and Federal Circuits in concluding that the Lanham Act applies to foreign activities having varying degrees of effect on commerce in the United States.The Supreme Court granted certiorari to resolve the circuit split over the extraterritorial reach of the Lanham Act. Hetronic argued that conduct inextricably tied to U.S. commerce should be governed by the Lanham Act. Abitron, on the other hand, argued that the Lanham Act did not apply to extraterritorial conduct, period. For example, Abitron argued that if found liable, it should only be on the hook for $240,000, the damages that resulted from sale of infringing goods sold to customers located in the United States.In an opinion written by Justice Alito and joined by Justices Thomas, Gorsuch, Kavanaugh and Jackson, the Supreme Court vacated and remanded the Tenth Circuit’s decision, holding:“This case requires us to decide the foreign reach of 15 U. S. C. §1114(1)(a) and §1125(a)(1), two provisions of the Lanham Act that prohibit trademark infringement. Applying the presumption against extraterritoriality, we hold that these provisions are not extraterritorial and that they extend only to claims where the claimed infringing use in commerce is domestic.”In reaching its decision, the Supreme Court used a two-step framework to apply its long-standing presumption against the extraterritoriality of federal statutes in general. In connection with the first step, the Court concluded that Congress has not “affirmatively and unmistakably” instructed that the provisions of the Lanham Act in question apply extraterritorially. As to the second step, according to Justice Alito, the proper test requires first determining the “focus” of the provisions at issue and then ascertaining whether the conduct relevant to that focus occurred in the United States. The Court concluded that the “use in commerce” is the conduct relevant to the focus of the provisions in ques

On June 29, 2023, the U.S. Supreme Court clarified the geographic limits for U.S. trademark enforcement. Just as with enforcement of registered copyrights and issued patents, the Supreme Court ruled that a trademark owner may not enforce against infringement of its trademark rights under the Lanham Act by filing suit in the United States if the infringement occurred beyond the U.S., absent infringing use in domestic commerce.Issue Before the CourtIn Abitron Austria GmbH v. Hetronic Int'l, Inc., No. 21-1043, the Supreme Court explored whether 15 U.S.C. § 1114(1)(a) and § 1125(a)(1) – two provisions of the Lanham Act – prohibit trademark-infringing conduct in foreign countries.Hetronic International, Inc. (Hetronic), a United States company that sells radio remote controls for construction equipment, filed a lawsuit in the United States for trademark infringement against six foreign parties, collectively referred to as "Abitron." Abitron, a former licensed distributor for Hetronic, claimed ownership to much of Hetronic's intellectual property, including the marks at issue. Abitron mostly used Hetronic's marks in foreign countries but also made some sales into the United States.Hetronic argued that because Abitron made direct sales in the United States and abroad, the provisions of the Lanham Act should apply to Abitron's conduct in its entirety. The U.S. District Court for the Western District of Oklahoma sided with Hetronic, with a jury awarding Hetronic approximately $96 million in damages for trademark infringement. The district court also ent

Can a party be held liable in the United States for trademark infringement based on use of a mark in other countries? In Abitron Austria GmbH et al. v. Hetronic Int’l, Inc., 600 U.S. __ (2023), the Supreme Court recently answered no, holding that liability for trademark infringement under the Lanham Act extends only to use of the mark in commerce in the United States.BackgroundHetronic manufactures and distributes radio remote controls for construction equipment in more than 45 countries. Originally a licensed distributor of Hetronic products, Abitron began to produce its own Hetronic-branded products, selling them primarily in Europe but with some direct sales in the United States. Hetronic responded with a lawsuit in the Western District of Oklahoma for trademark infringement under 15 U.S.C. §§ 1114(1)(a) and 1125(a)(1) and sought damages for all of Abitron’s allegedly infringing acts worldwide.Throughout the proceedings, the District Court rejected Abitron’s arguments that damages based on non-U.S. conduct, including wholly foreign sales, represented an impermissible extraterritorial application of the Lanham Act. At trial, a jury awarded $96 million to Hetronic based on Abitron’s global use of Hetronic’s marks, which included damages for Arbitron’s: (1) direct sales to consumers in the United States; (2) foreign sales of products where the United States was the final destination; and (3) foreign sales of products that did not end up in the United States. The District Court also entered a permanent injunction preventing Abitron from using Hetronic’s marks anywhere in the word.On appeal, the Tenth Circuit slightly narrowed the injunction to cover only certain countries but otherwise affirmed the judgement, concluding that the Lanham Act extended to “all of [Abitron’s] foreign infringin