News & Analysis as of

Foreign Sales

A&O Shearman

Patent damages for sales abroad - potential expansion of the law

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American patent law is evolving to allow damages for foreign sales of infringing products. Both American companies making sales abroad and foreign companies with exposure to American supply chains should take note. Previous...more

McDermott Will & Emery

Message Received: Trade Secret Law Damages Available for Sales Outside US

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The US Court of Appeals for the Seventh Circuit affirmed, in a matter of first impression, a district court’s decision to apply trade secret law extraterritorially and award trade secret damages for foreign sales while also...more

AEON Law

Patent Poetry: Federal Circuit Rules on Patent Damages Based on Foreign Conduct

AEON Law on

The Federal Circuit has ruled that a US patent-holder plaintiff may be able to recover damages for a defendant’s foreign sales of infringing products if the foreign sales were proximately caused by the defendant’s improperly...more

McDermott Will & Emery

Foreign Sales to Foreign Customers Are Not Actionable Under the Lanham Act

Issuing a revised opinion following the Supreme Court’s 2023 decision in Abitron Austria GmbH v. Hetronic Int’l, Inc., the US Court of Appeals for the Tenth Circuit determined that none of the defendant’s purely foreign sales...more

Axinn, Veltrop & Harkrider LLP

Reading Tea Leaves: Oral Arguments in Motorola v. Hytera and the Extraterritorial Reach of the DTSA

Last week, the Seventh Circuit heard arguments in Motorola Solutions, Inc. v. Hytera Communications Corp. concerning when, if at all, civil claims under the Defend Trade Secrets Act (“DTSA”) may extend to extraterritorial...more

Axinn, Veltrop & Harkrider LLP

Motorola v. Hytera: Seventh Circuit Set to Hear Arguments on the Extraterritorial Reach of DTSA

On December 5, the Seventh Circuit in Motorola Solutions, Inc. v. Hytera Communications Corp. will hear high-stakes arguments concerning the application of the federal Defend Trade Secrets Act (“DTSA”) to trade secrets taken...more

Seyfarth Shaw LLP

Courts and Brand Owners Struggling With SCOTUS Decision Limiting Ability to Police Against Foreign Trademark Infringement

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The U.S. Supreme Court’s end-of-term decision in Abitron v. Hetronic seems to have created more questions than answers about U.S. brand owners’ ability to leverage the federal Lanham Act in global trademark disputes. In the...more

Holland & Knight LLP

Holland & Knight Defense Situation Report: July 2023

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Welcome to Holland & Knight's monthly defense news update. We are excited to bring you the latest in defense policy, regulatory updates and other significant developments. ...more

Pillsbury - Internet & Social Media Law Blog

Out of Bounds: Supreme Court Sets the Limits of U.S. Trademark Law

On June 29, 2023, in Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S. ___ (2023), the U.S. Supreme Court held that the Lanham Act could not extend to trademark infringement that occurred almost entirely outside...more

Sunstein LLP

U.S. Brand Owners Have More Limited Options to Curb Foreign Infringement following Supreme Court’s Abitron Ruling

Sunstein LLP on

On June 29, 2023, the Supreme Court issued a much-anticipated trademark decision in Abitron Austria v. Hetronic International concerning the global reach of the Lanham Act. The Court determined that U.S. law does not extend...more

McAfee & Taft

SCOTUS rules Lanham Act does not have extraterritorial reach

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In the United States, trademarks are governed on the federal level by the Lanham Act (also known as the Trademark Act of 1946), which was enacted on July 5, 1946, and is codified at 15 U.S.C. § 1051 et seq. The Lanham Act...more

Buckingham, Doolittle & Burroughs, LLC

U.S. Businesses Need Foreign Trademark Registrations in the Wake of Abitron

U.S. businesses selling abroad cannot enforce domestic trademarks against foreign entities selling infringing goods into the United States through strawmen, according to a recent ruling by the U.S. Supreme Court in...more

Clark Hill PLC

U.S. Supreme Court’s Decision in Abitron Austria GMBH et al. v. Hetronic International, Inc. Underscores the Need for Foreign...

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On June 29, the United States Supreme Court issued its highly anticipated decision regarding the foreign reach of the Lanham Act, the federal statute that prohibits trademark infringement. The decision confirms the...more

Fenwick & West LLP

A Domesticated Lanham Act: Supreme Court’s Abitron Ruling Opens New Debate on Foreign Reach of U.S. Trademark Law

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The Supreme Court’s June 29, 2023, decision in Abitron Austria GMBH v. Hetronic Int’l, Inc., No. 21-1043, ended decades of circuit splits on the standard for determining the extraterritorial reach of the Lanham Act (see our...more

Sullivan & Worcester

Supreme Court Rules U.S. Trademark Law Does Not Apply to Foreign Conduct

Sullivan & Worcester on

On June 29, 2023, in Abitron Austria GmbH v. Hetronic International, Inc., the U.S. Supreme Court ruled that the Lanham Act does not have an extraterritorial scope and applies only in cases where the alleged infringing “use...more

BakerHostetler

Extraterritorial Reach of the Lanham Act

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The Supreme Court recently ruled in Abitron Austria GmbH v. Hetronic International, Inc. that Lanham Act (Act) remedies for trademark infringement do not extend to infringing conduct that takes place outside the United...more

Foster Garvey PC

Supreme Court Limits International Application of the Lanham Act in Abitron Decision

Foster Garvey PC on

In its recent decision in Abitron Austria GmbH v. Hetronic International, Inc., the Supreme Court instructed that certain trademark infringement claims can only be pursued where the infringing conduct occurs domestically. The...more

Holland & Knight LLP

U.S. Supreme Court: U.S. Trademark Statute Bars Domestic Infringement Only

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The U.S. Supreme Court issued a decision on June 29, 2023, addressing the scope of federal trademark law on conduct occurring outside of the United States. The case, Abitron Austria GmbH v. Hetronic International, Inc.,...more

WilmerHale

Supreme Court Decides Extraterritorial Reach of the Lanham Act

WilmerHale on

On June 29, 2023, the Supreme Court decided Abitron Austria GMBH v. Hetronic Int’l, Inc., No. 21-1043, addressing the extraterritoriality of the Lanham Act. The Court held that §1114(1)(a) and §1125(a)(1) of the Lanham Act do...more

Skadden, Arps, Slate, Meagher & Flom LLP

Supreme Court Holds Lanham Act Attaches Only to Liability for Domestic Uses in Commerce

On June 29, 2023, the U.S. Supreme Court ruled unanimously in favor of the petitioner in Abitron Austria GmbH v. Hetronic International Inc. However, the justices were divided 5-4 as to the precise reasoning and what facts...more

Morrison & Foerster LLP

U.S. Supreme Court Eliminates Extraterritorial Applications of the Lanham Act

Can a party be held liable in the United States for trademark infringement based on use of a mark in other countries? In Abitron Austria GmbH et al. v. Hetronic Int’l, Inc., 600 U.S. __ (2023), the Supreme Court recently...more

Vinson & Elkins LLP

The Battle of the ‘Trons’: SCOTUS Nixes Extraterritorial Application of the Lanham Act

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The Supreme Court of the United States recently considered whether portions of the Lanham Act that relate to trademark infringement can be applied to conduct that takes place outside the United States. Abitron Austria GmbH et...more

Irwin IP LLP

The Not So Long Arm of the Law: Limits on the Lanham Act

Irwin IP LLP on

The Supreme Court decided the extraterritorial reach of two provisions of the Lanham Act prohibiting trademark infringement. Abitron appealed the Tenth Circuit’s decision that the Lanham Act extended to Abitron’s foreign...more

Cooley LLP

US Supreme Court Ruling Limits Extraterritorial Reach of Lanham Act

Cooley LLP on

On June 29, 2023, the US Supreme Court issued a unanimous decision in Abitron Austria GmbH v. Hetronic International, Inc., limiting the extraterritorial reach of provisions of the Lanham Act prohibiting trademark...more

Morgan Lewis

Lanham Act Only Extends to Claims Stemming from US Conduct that Causes a Likelihood of Confusion

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The US Supreme Court unanimously overturned a $90 million verdict for trademark infringement under the Lanham Act, 97% of which was attributed to purely extraterritorial conduct. While the holding attempts to draw a...more

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