U.S.: High Court Majority Holds That Trademark Law Applies Only to Domestic Uses

All nine justices from the US Supreme Court agree that the Lanham Act, which addressed trademark infringement claims, does not generally apply beyond U.S. borders, however, four justices would broaden its reach to foreign conduct that would cause confusion in the US.

Justice Ketanji Brown Jackson separately addressed points regarding “use in commerce” for purposes of the Lanham Act’s trademark infringement provisions.

Finnegan partner Mark Sommers  told IP Law Daily that, “The Court was clearly split, with Justice Jackson serving as the ‘swing vote,’ as she interpreted ‘use in commerce’ in a meaningfully different manner than the majority,” he explained. “In her concurrence, Justice Jackson read ‘use in commerce’ more broadly than the majority and in a way that could capture a greater swath of foreign-entity infringing uses of marks on products first produced and sold outside the United States. In sum, if the product ends up within the U.S. commerce bearing an infringing mark, depending on the circumstances, it could trigger Lanham Act liability against the foreign party as that constituted ‘use in commerce.’”

He added, “Although joining the majority opinion, Justice Jackson’s analysis appeared more philosophically in line with Justice Sotomayor’s concurrence, which determined the focus of the Lanham Act was on ‘likelihood of confusion’ among U.S. consumers.”

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