CHICAGO, Feb. 3, 2023 — The American Bar Association filed an amicus brief today with the U.S. Supreme Court, asking the court to clarify the standards lower courts use in applying the federal Lanham Act to trademark disputes that cross international borders.
Federal circuits have employed several different legal standards in deciding extraterritorial 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.”
“This breakdown of functional boundaries between distant territories has heightened the potential impact of foreign infringement on United States commerce and, relatedly, valuable trademark rights cultivated within this country,” the ABA brief said. “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 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, both during the partnership and after forming a competing company.