TRADEMARK INFRINGEMENT

Abitron Austria GmbH v. Hetronic International, Inc.

Issues

Does the Lanham Act apply extraterritorially to trademark infringement by a foreign entity’s conduct outside of the United States, including those foreign commercial activities that never took place in the United States or confused U.S. consumers?

This case asks the Supreme Court to determine whether the Lanham Act (“the Act”), a federal trademark law, applies extraterritorially to trademark infringement outside the United States by a foreign entity. Abitron argues that the Act does not apply to foreign sales, because such an extensive reading of the Act’s scope is not supported by statutory interpretation or case law. Hetronic counters that both the Act’s language and the Court’s precedent about Congress and the Act’s expansive power leaves no doubt about its extraterritorial reach. The outcome of this case has heavy implications for the territoriality principle in international law and the rights and remedies of U.S. trademark owners.

Questions as Framed for the Court by the Parties

Whether the U.S. Court of Appeals for the 10th Circuit erred in applying the Lanham Act, which provides civil remedies for infringement of U.S. trademarks, extraterritorially to Abitron Austria GmbH’s foreign sales, including purely foreign sales that never reached the United States or confused U.S. consumers.

In the 1980s, a German engineer developed radio control products and established a German company, Hetronic Steuersysteme GmbH, which was the predecessor of one of the parties in this case, Abitron Austria GmbH, et al. (“Abitron”). Brief for Petitioners, Abitron Austria GmbH, et al. at 8. The German engineer later established Hetronic International, Inc.

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B&B Hardware, Inc. v. Hargis Indus., Inc.

Issues

Does the Trademark Trial and Appeal Board’s (“TTAB”) likelihood-of-confusion determination have a preclusive effect in a trademark infringement claim; or, alternatively, should federal courts defer to the TTAB’s findings on likelihood-of-confusion absent strong evidence to rebut the finding?

The Supreme Court’s decision in this case will determine whether a Trademark Trial and Appeal Board (“TTAB”) likelihood-of-confusion finding has preclusive effect in a subsequent trademark-infringement claim. If the Court finds that issue preclusion does not apply, the Court will address whether federal courts should defer to the TTAB’s likelihood-of-confusion determination in the absence of strong contrary evidence. B&B Hardware argues that the concept of “likelihood of confusion” has the same meaning in both TTAB and federal court proceedings and applies equally to both trademark-registration proceedings and trademark-infringement actions. Hargis Industries counters that preclusion is inapplicable because TTAB administrative decisions are not binding on Article III courts. The Court’s ruling will have significant implications for judicial efficiency in TTAB infringement cases before both the TTAB and federal courts, and will potentially also impact consumer confidence in trademarks. 

Questions as Framed for the Court by the Parties

  1. Whether the TTAB’s finding of a likelihood of confusion precludes Hargis from relitigating that issue in infringement litigation, in which likelihood of confusion is an element.
  2. Whether, if issue preclusion does not apply, the district court was obliged to defer to the TTAB’s finding of a likelihood of confusion absent strong evidence to rebut it.

For over fifteen years, B&B Hardware, Inc. (“B&B”), doing business as Sealtight Technology, and Hargis Industries, Inc. (“Hargis”), doing business as Sealtite Building Fasteners, have been involved in trademark litigation over the similarity of their marks. See B&B Hardware, Inc. v.

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KP Permanent Make-up, Inc. v. Lasting Impressions, Inc.

 

KP Permanent Make-up, Inc. v. Lasting Impressions, Inc., MCN International, Inc. tests whether a showing of the absence of a likelihood of confusion is necessary before a defendant may invoke the classic fair use defense in a trademark infringement suit. By statute, incorporating cases at common law, there appears to be no such requirement. In this case, the Court will determine whether the Ninth Circuit erred in applying such a rule.

Questions as Framed for the Court by the Parties

Does the classic fair use defense to trademark infringement require the party asserting the defense to demonstrate an absence of likelihood of confusion, as is the rule in the Ninth Circuit, or is Fair Use an absolute defense, irrespective of whether or not confusion may result, as is the rule in other Circuits?

KP Permanent Make-up, Inc. ("KP") and Lasting Impressions, Inc. ("LI") are direct competitors in the business of supplying and distributing pigment colors for use in permanent make-up. KP Permanent Make-up, Inc. v. Lasting Impression, Inc., 328 F.3d 1061, 1065 (9th Cir. 2001).

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Lucky Brands Dungarees Inc. v. Marcel Fashions Group Inc.

Issues

Under the doctrine of preclusion, can a defendant who fails to raise a defense in a prior action be barred from raising that defense in subsequent actions between the same parties?

This case asks the Supreme Court to consider whether courts can prevent a defendant from raising a defense if the defendant failed to assert that defense against the same plaintiff in a prior, similar lawsuit. The Second Circuit recognized “defense preclusion” as a valid civil procedure concept to bar Lucky Brands Dungarees from raising a new defense in a trademark infringement lawsuit against Marcel Fashions Group where Lucky Brands Dungarees could have raised this defense in a previous lawsuit over the same alleged infringement. Lucky Brands Dungarees contends that applying defense preclusion against a defendant conflicts with fundamental principles of res judicata and is a novel invention by the Second Circuit that is harmful to defendants whose interests change over time. Marcel Fashions Group counters that defense preclusion is a logical feature of res judicata and argues that this doctrine clearly applies to defendants who, after losing a lawsuit, do not change their conduct. The Supreme Court’s decision in this case will impact when and how defendants strategically raise defenses in civil litigation.

Questions as Framed for the Court by the Parties

Whether, when a plaintiff asserts new claims, federal preclusion principles can bar a defendant from raising defenses that were not actually litigated and resolved in any prior case between the parties.

Both the Petitioner Marcel Fashions Group (“Marcel”) and the Respondent Lucky Brand Dungarees (“Lucky”) are clothing companies. Marcel Fashions Grp. Inc. v. Lucky Brand Dungarees Inc. at 3. For almost twenty years, the two companies have “hotly” disputed the right to a certain trademark. Id.

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trademark infringement

unfair competition

The law of unfair competition encompasses torts that cause economic harm to a business through deceptive or wrongful business practices. Unfair competition can be broadly divided into two categories:

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