As technology evolves and the Internet becomes the most prevalent way to purchase products, importation and exportation of counterfeit goods has become an expensive problem for trademark owners. Protecting U.S. brands from foreign infringements has become an increasingly important part of brand protection and management. This article will explore three scenarios of foreign infringement, the applicability of the Lanham Act to such infringements, and the manner in which U.S. trademark owners can become alerted to such infringements to better protect their brands.
The Lanham Act generally governs activities relating to the ownership and use of trademarks in the United States. However, in certain instances, it is permissible for U.S. courts to exercise extraterritorial jurisdiction pursuant to the Lanham Act for activities that have occurred outside the country. Activities that take place on foreign soil or which benefit foreign merchants that can trigger the application of the Lanham Act generally arise in three scenarios: 1) importation of infringements into the United States; 2) infringing activity within a U.S. Foreign-Trade Zone; and 3) infringing export sales made only abroad.
Scenario 1: Importation of infringements into the United States
In this scenario, a merchant in a foreign nation labels goods with an infringing mark and transports them into the United States. These acts are clearly subject to American law and the merchant can be sued in a U.S. court, assuming one can obtain personal jurisdiction in some American court.
Read the full article, IP: Lanham Act Extended for Trademark Infringement Occurring in Foreign Nations, on Inside Counsel's website.
This publication has been prepared by Hinshaw & Culbertson LLP to provide information on recent legal developments of interest to our readers. It is not intended to provide legal advice for a specific situation or to create an attorney-client relationship.