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June 30, 2023

Tim Getzoff Shares Insights on High Court's Ruling Limiting Lanham Act to Domestic Commerce

updated 7/5/2023

Holland & Hart Trademark partner Tim Getzoff shares insights with a number of business and legal media outlets on the US Supreme Court’s decision in Abitron v Hetronic, limiting the reach of the Lanham Act. The Court ruled that provisions of the Lanham Act prohibiting trademark infringement do not apply outside the US and extend “only to claims where the infringing use in commerce is domestic.” The Court reversed the decision of the Tenth Circuit Court of Appeals, vacating a $96 million trademark damages award in favor of Hetronic for sales of infringing radio control products by Abitron Austria GmbH and others to European customers.

Getzoff told Bloomberg Law, “I think this decision has made the rule murkier, not clearer…[A]nd it’s going to be left to the lower courts for the next several years to figure out what ‘use in commerce’ means when you’re talking about a foreign infringement that’s made its way back to the US, or is having an effect on the US.”

Sharing insights with IPWatchdog, Getzoff commented, “The negative implications for U.S. trademark owners could be significant and I do not believe the opinion will be well received by U.S. brand owners or U.S. trademark practitioners for several reasons. Foreign counterfeiting of major U.S. brands continues to be a significant problem, and this opinion makes it more difficult for U.S. companies to enforce their trademarks and stem the flow of counterfeit goods into the U.S.”

He also discussed impacts of the Supreme Court’s decision with Law360, “Trademark law is all about avoiding confusion, and I think this opinion is ironically going to create a lot of confusion by practitioners and courts, as they try to apply this new test and figure out what the contours are.”

Getzoff told Wolters Kluwer, “The majority opinion tosses 70 years of jurisprudence on this issue out the window, starting with the Bulova Watch v. Steele case, and announces a brand new test that had never been used or even articulated before.”

Getzoff shared insights with The Global Legal Post, saying, “the majority opinion significantly restricts the ability of US trademark owners to enforce their trademarks against infringement and counterfeiting that finds its way back into the US.”

Discussing insights with Thomson Reuters Westlaw Today, Getzoff said, “This opinion makes it more difficult for U.S. companies to enforce their trademarks and stem the flow of counterfeit goods into the U.S.”

Read the Bloomberg Law article here: “US Trademark Law’s Global Reach Curtailed by Supreme Court,” June 29, 2023 (subscription needed).

Read the IPWatchdog article here: “SCOTUS Says Lanham Act Does Not Reach Extraterritorial Infringement,” June 29, 2023 (subscription needed).

Read the Law360 article here: “High Court Makes It Harder To Stop Foreign Counterfeit Goods,” June 29, 2023 (subscription needed).

Read the Wolters Kluwer article here: “U.S. High Court majority holds that trademark law applies only to domestic uses,” June 29, 2023 (subscription needed).

Read the The Global Legal Post article here: “SCOTUS curtails foreign reach of US trademark law in surprise ruling,” July 5, 2023.

Read the Thomson Reuters Westlaw Today article here: “Supreme Court Conforms With International Trademark Norms, Attorneys Say,” July 5, 2023 (subscription needed).


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