What Is The Geographical Reach Of The Lanham Act? The Supreme Court Is Set To Decide

On November 4th, 2022, the Supreme Court of the United States announced the granting of a Petition for a Writ of Certiorari in the case of Abitron Austria GmbH et al. v. Hetronic International Inc—a controversy over the geographical reach of the Lanham Act. Here, our Florida intellectual property lawyer provides an overview of the stakes of the upcoming Supreme Court case.

Case Analysis: Abitron Austria GmbH et al. v. Hetronic International Inc. 

The Background 

The Lanham Act is a federal law that governs trademark rights in the United States. It is the primary trademark statute. There are outstanding legal questions about the geographical reach of the law. In the case of Abitron Austria GmbH et al. v. Hetronic International Inc., the Ten Circuit Court of Appeals affirmed a massive, $115 million jury verdict in a trademark infringement claim arising out of Oklahoma. The defendant, a German company, allegedly violated the trade dress rights of an American company. The products in question were never sold in the United States. The plaintiff brought its claim on the grounds that the trademark infringement (trade dress infringement) in question had a material impact on American commerce and, thus, was in the scope of the Lanham Act. The Tenth Circuit Court of Appeals agreed with this argument.

 The Legal Issue 

The core issue at stake in this case is whether the Lanham Act applies extraterritorially. As a general rule, American laws do not apply outside of the borders of the United States. However, in affirming the decision of a lower court, the Tenth Circuit Court of Appeals ruled that there is an explicit exception within the Lanham Act that allows the law’s geographical reach to extend beyond American borders if the alleged infringement has a “substantial effect on U.S. commerce.”

 The Stakes 

It will be up to the Supreme Court of the United States to decide the extraterritorial reach (or lack thereof) of the Lanham act. If the nation’s highest court rules in favor of the plaintiff—thereby affirming the verdict—it will have major implications for trademark rights. Most notably, the Supreme Court’s rule will have significant consequences for companies that are engaged in international commerce and multi-national distribution agreements.

 The Next Step 

The Supreme Court will soon hear oral arguments in the case of Abitron Austria GmbH et al. v. Hetronic International Inc. A decision that clarifies the geographical reach of the Lanham Act is expected in 2023. Our law firm will keep a close watch on this case and other related IP law matters.

 Contact Our South Florida IP Rights Attorney Today

At Perkins Law, our Florida intellectual property lawyer is committed to providing top level legal guidance and support to clients. If you have any questions about the geographical reach of the Lanham Act, we are available to help. Call us now or contact us online to set up your confidential consultation. Our firm provides IP services in Palm Beach County and throughout South Florida.

Source:

supremecourt.gov/orders/courtorders/110422zr_5i26.pdf