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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Tuesday, April 3, 2018

  • schedule Time

    1:00 PM E.T.

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.


  • Live Online


    On Demand

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MSRP
$347.00
$297.00
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Discount expires 8/29/25

This course is $0 with these passes:

CLE
ALL

This CLE course will guide IP counsel on the reach of the Lanham Act’s extraterritorial provision. The panel will examine how the courts have treated these cases and offer insights into how IP owners can use the Lanham Act to protect their IP rights.

Description

As companies expand their reach outside the U.S. border, there are questions about the circumstances for applying the Lanham Act to conduct outside the U.S. The Lanham Act’s extraterritorial reach gives IP rights holders a path to pursue alleged foreign infringers in U.S. courts.

The Supreme Court denied certiorari in Belmora L.L.C. v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016), cert. denied (U.S. Feb. 27, 2017). The Court thus left in place the Fourth Circuit’s decision that a plaintiff who owns a trademark outside of the U.S. has standing to sue under Lanham Act §§14(3) and 43(a) for the unauthorized use of a foreign brand that the plaintiff never used in the United States. Foreign trademark owners may assert standing under the Lanham Act without proving ownership or use of a trademark in U.S. commerce.

District courts approach the application of the Lanham Act differently. In International Diamond Importers Inc. d/b/a I.D.I. Design Inc. v. Med Art Inc., (S.D.N.Y. 2017), the district court examined the extraterritorial applicability under the three-factor test articulated in Vanity Fair Mills Inc. v. T. Eaton Co. (2d Cir. 1956). The district court in Blumenthal Distributing Inc. d/b/a Office Star v. Herman Miller Inc. (C.D. Cal. 2017) applied a different three-part test. Under the third part, the court provided seven factors to consider when assessing the application.

Listen as our authoritative panel of IP attorneys discusses the Lanham Act’s extraterritorial reach and how the courts have treated these cases. The presenters will also discuss how IP owners can use the Lanham Act to protect those rights.

Outline

  1. Lanham Act’s extraterritorial reach
  2. Court treatment
    1. Blumenthal Distributing Inc. d/b/a Office Star v. Herman Miller Inc., 2017 WL 3271706 (C.D. Cal. Aug.1, 2017)
    2. Int’l Diamond Importers Inc. d/b/a I.D.I. Design Inc. v. Med Art Inc., 2017 WL 3271706 (S.D.N.Y. June 29, 2017)
    3. Belmora L.L.C. v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016), cert. denied, 2017 WL 737826 (U.S. Feb. 27, 2017)
    4. Trader Joe’s Co. v. Hallatt, 835 F.3d 960 (9th Cir. 2016)
  3. Use of the Lanham Act to protect IP rights

Benefits

The panel will review these and other key issues:

  • How are U.S. courts addressing cases in which U.S. registrants seek relief that would require the extraterritorial application of the Lanham Act?
  • Does the extraterritorial application of the Lanham Act implicate the federal court’s subject matter jurisdiction?
  • Does the extraterritorial application of the Lanham Act run contrary to the fundamental “use in commerce” requirement?