World Trademark Review Quotes Mark Lezama on Supreme Court Ruling Limiting Extraterritorial Reach of Lanham Act

Knobbe Martens partners Mark Lezama was quoted by World Trademark Review (WTR) in the article, “US Supreme Court’s Abitron ruling clarifies extraterritorial reach of Lanham Act, but key questions remain.” The article discusses the Supreme Court’s ruling in Abitron v. Hetronic International, which concerns the extent to which U.S. trademark law applies when a company uses a mark outside the United States.

According to the WTR article, while the Supreme Court ruling limits extraterritorial reach of the Lanham Act, questions over treatment of resales in U.S. remain unanswered. In the case, the Tenth Circuit had affirmed a judgment of more than $90 million in favor of Hetronic, who had accused Abitron, a German company, of infringing its U.S. trademarks. The primary issue before the Supreme Court was whether Abitron could be liable for using those marks in connection with foreign sales. The Supreme Court held that 15 U.S.C. § 1114(1)(a) and § 1125(a)(1) do not apply extraterritorially and that the infringing use in commerce of a trademark “provides the dividing line between foreign and domestic applications of these provisions.”

Commenting on the decision, Lezama said, "It seems that with this decision the majority were trying to make a clear-cut rule regarding extraterritoriality. However, since they didn't address any of the specific facts in the case or apply them in this decision, many questions remain. In other words, the rule may not be as clearcut as it initially appeared to be."

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Lezama previously commented on the oral arguments back in March, for articles published by The American Lawyer and Bloomberg Law.