On October 7, Seyfarth partner Lauren Leipold co-presented a Strafford webinar on “International Trademark Protection After Abitron: Branding and Enforcement Considerations.” Lauren was joined by Thomas Brooke of Holland & Knight and Martin Schwimmer of Leason Ellis.
The Supreme Court’s ruling in Abitron v. Hetronic (U.S. 2023) limited the extraterritorial reach of the Lanham Act, stating that infringement claims are confined to domestic uses. This raises important questions about what constitutes “use in commerce” under the Act, and underscores the necessity for U.S. trademark owners to explore robust strategies for protecting their marks internationally.
The panel of experienced trademark attorneys discussed the implications of the Abitron decision and what U.S. companies should do if they believe they are victims of foreign trademark infringement. The panel also discussed how this informs and impacts a company’s brand protection and enforcement strategies within and outside the U.S. The discussion was a reminder of the evolving challenges in trademark law and the importance of staying informed.
Key Takeaways from the Webinar
- The standard for “use in commerce” remains murky. The panel discussed differing approaches and definitions adopted by lower courts and by the Supreme Court in Abitron, suggesting that post-Abitron, more direct ties to U.S. commerce are required before a foreign defendant’s activity will be subject to Lanham Act protection.
- Personal jurisdiction remains key. Even if Abitron’s “use in commerce” standard does not require a sales transaction in the U.S., jurisprudence that has developed over the past several decades surrounding personal jurisdiction over foreign defendants suggests that a domestic sale is key.
- Brand protection strategy. The panel discussed the importance of shoring up registrations in other jurisdictions in order to lay the proper groundwork to enforce against cross-border infringers. In addition, the panel suggested that the contributory infringement doctrine may be useful in this context.