Pryor Cashman Partner Dyan Finguerra-DuCharme, co-chair of the Trademark Practice, and Litigation Associate Nicholas Saady have co-authored an article for The National Law Journal that examines the impact of the U.S. Supreme Court's decision in Abitron v. Hetronic International on trademark law.
In "The Lanham Act Does Not 'Rule the World,'" Dyan and Nick look at practical issues raised by the SCOTUS ruling, the Court's Lanham Act test for international trademark disputes, and what businesses and rights owners need to know about the case.
Discussing the Lanham Act test, they note that the majority's opinion has practical limits:
Although the majority's opinion provides what seems to be a straightforward test to determine the application of the Lanham Act to international trademark disputes, it fails to provide a robust or practically workable framework to decide such disputes. It is challenging to apply the majority's test on a case-by-case basis, especially when technology has eroded jurisdictional boundaries. Determining precisely what constitutes "use in commerce" and whether that fits within the undefined "focus" of the Lanham Act are particularly problematic tasks.
The majority held that it was critical to look at the "focus" of the relevant provisions of the Lanham Act and then assess use in commerce in light of that "focus." However, the majority did not articulate what that "focus" is. The "focus" could be on preventing infringing use of trademarks (as Abitron argued), protecting the goodwill of mark owners and on preventing consumer confusion (as Hetronic argued), or preventing likely consumer confusion (as the government argued). Some commentators have suggested that the "focus" is "use in commerce"; however, that seems unworkable given that the court explicitly held that one must examine the conduct (i.e., use in commerce) relevant to the "focus" of the Lanham Act—one could not examine use in commerce (i.e., conduct) relevant to use in commerce (i.e., focus).
They also discuss the need for businesses to take a global approach to trademark infringement issues:
A global approach ensures infringers who are based, or conduct substantial business, overseas cannot operate with impunity. They will either be subject to litigation in the United States or abroad; the location of their conduct will just mean they get to pick their poison. With that said, the unfortunate consequence of Abitron is that this added diligence will increase the costs and time expenditure associated with trademark protection, as well as force rights owners to commence separate litigation in separate jurisdictions to fully address cross-border infringement.
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