chevron-down Created with Sketch Beta.
    February 13, 2023 Intellectual Property

    ABA urges Supreme Court to clarify law for trademark cases

    The American Bar Association has filed an amicus brief with the U.S. Supreme Court, asking the court to adopt a three-prong legal standard for lower courts to use when adjudicating cross-border international trademark disputes under the federal Lanham Act.

    A recent ABA amicus brief asked the U.S. Supreme Court to adopt a standard for lower courts to adjudicate certain international trademark disputes.

    A recent ABA amicus brief asked the U.S. Supreme Court to adopt a standard for lower courts to adjudicate certain international trademark disputes.

    Federal circuits have employed several different legal standards in deciding cases under the Lanham Act, which provides civil remedies for the infringement of U.S. trademarks. The ABA brief cited the need for Supreme Court guidance, noting the rapid development of technology and the growth of the internet, which “has dramatically improved the ability to conduct business internationally and in many cases has led to brand awareness in territories outside a trademark’s geographic scope.”

    “It therefore is imperative to trademark professionals — including members of the ABA — and their clients to understand clearly the circumstances in which the Act applies extraterritorially,” the ABA brief said.

    The case at issue involves a U.S. company based in Oklahoma, which manufactures radio remote control systems for heavy industrial uses. It sued two of its former European distributors for selling copycat products, claiming that they had breached agreements, infringed on trademarks and misappropriated trade secrets.

    The U.S.-based company prevailed in both U.S. District Court and before the U.S. Court of Appeals for the 10th Circuit. But the 10th Circuit court’s reasoning differed from the three-prong test used by at least three other federal circuits, including the 2nd Circuit in Vanity Fair Mills, Inc. v. T. Eaton Co. In that decision, the 2nd Circuit held that courts should consider three key components for whether to apply the Lanham Act in cross-border disputes: the effect of the defendants’ conduct on U.S. commerce, the citizenship of the defendants and any conflict with the laws of foreign jurisdictions.

    The ABA brief, filed on Feb. 3, urges the Supreme Court to adopt that test while upholding the 10th Circuit’s judgment in support of the U.S. company.

    Related links: