Trademark Law – N.Y.U. Proceedings

by Lyndsey Garbee*

The presumption against extraterritoriality is a canon of construction meant to limit U.S. laws to matters of domestic concern. However, the Supreme Court has held that this presumption can be overcome when domestic conduct occurs that is relevant to the statute’s focus. In Abitron v. Hetronics, the Supreme Court found that the relevant conduct for purposes of the Lanham Act, which regulates trademark rights and liabilities, is domestic use of the infringing mark in commerce. However, the Lanham Act only prohibits uses in commerce that are likely to cause consumer confusion. Based on the text of the Lanham Act, the Court’s extraterritoriality precedent, and the purpose of the Lanham Act, this Contribution argues that the proper analysis of the extraterritorial application of the Lanham Act turns not on domestic use in commerce, but on whether such use is likely to cause domestic consumer confusion.

by Max Schneider*

Trademark ownership is on the rise, and with it comes an increase in trademark infringement claims under the Lanham Act. This uptick may be in part because the Lanham Act does not have a statute of limitations. Alleged infringers therefore, often raise the laches defense. Under a laches defense, if the trademark owner unreasonably delays in asserting their claim, and the delay unduly prejudices the alleged infringer, then courts may find that the infringement suit is time-barred, or they may say the equities weigh in favor of letting the case proceed. While an equitable doctrine like laches balances the harms in each case, it opens the door for far more infringement suits that may otherwise have been clearly time-barred by a statute of limitations. Given the sharp increase in infringement suits, more and more defendants are asserting laches defenses. This Contribution suggests that Congress should amend the Lanham Act to include a statute of limitations. Doing so would create uniformity across areas of intellectual property law, provide concrete notice to trademark owners, reduce infringement suits that crowd courts, and alleviate inconsistent rulings that muddle the meanings of “unreasonable” and “prejudice.”

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Exploring New Approaches to Unsettled Legal Questions

Tag: Trademark Law

Lanham-Strung: How the Supreme Court Misunderstood the Proper Scope of Extraterritorial Liability under the Lanham Act

Nothing to Latch Onto: Trademark Law’s Unpredictability in Laches Defenses Calls for a Statute of Limitations