Two years ago, the Supreme Court decided Abitron Austria GmbH v. Hetronic International, Inc., which narrowed the extraterritorial reach of the Lanham Act. 600 U.S. 412 (2023). Applying this ruling, the Ninth Circuit simultaneously loosened the threshold inquiry for trademark plaintiffs, while also tightening the substantive liability test.
In Doctor's Best v. Nature's Way Products, LLC, the alleged infringer exclusively marketed and sold products abroad, but manufactured products domestically. The Ninth Circuit made clear that a claim of trademark infringement requires confusion-causing conduct that occurs domestically, but that this conduct can include goods being sold or transported domestically. Thus, the alleged infringer's domestic manufacturing of the products gave rise to a potential infringement claim because this caused domestic "transportation." So, in that sense, the Ninth Circuit read Abitron broadly in favor of plaintiffs.
But this was a bit of Pyrrhic victory, because the Ninth Circuit then concluded that there was no likelihood of confusion because the parties' products were not marketed and sold in the same markets. After all, the alleged infringer only marketed and sold products abroad, and thus there was no market overlap domestically. This means that crossing the "in commerce" hurdle of Abitron doesn't seem to do much good for a plaintiff if there isn't actually domestic marketing or sales.
So, in there any world in which a product is only transported domestically—not sold or marketed—and yet a court could find a likelihood of confusion? The Ninth Circuit hinted that there is when it briefly discussed the potential for e-commerce. Specifically, the court noted that it may be possible that e-commerce marketing and sales abroad may also lead to U.S. consumers accessing the website (even if it is only marketed for foreign consumers), causing domestic confusion. In a scenario like this, you could have a plaintiff thread the confusion needle here.
I think that Doctor's Best signals a world one step closer to the one I've been pushing for, where there is no distinct territoriality test and likelihood of confusion test.1 Abitron made the "in commerce" test a requirement to avoid extraterritorial application, but once that threshold is crossed, these cases indicate that the only question is likelihood of confusion—and not some intermediate territoriality analysis. In my view, that's a good thing.
Footnote
1 Joseph M. Levy, The Confusion of Trademark Territoriality, 18 Chi.-Kent. J. Int. Prop. 324 (2019), https://scholarship.kentlaw.iit.edu/cgi/viewcontent.cgi?article=1234&context=ckjip.
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