Careers

Diversity

With 17 offices, from New York to Los Angeles and Seattle to Orlando, we live and work in communities all over the U.S., collaborating across locations, disciplines and even borders. Our experienced, highly ranked lawyers serve businesses wherever they are and wherever they want to go.

Offices

About Us

Pages

Professionals

Thought leadership: blogs, podcasts, videos, publications, events and news

Insights

Services

Pro Bono

Am Law 100 firm with practices in Business, Digital Assets and Data Management, Intellectual Property, Labor & Employment, Litigation and Tax.

Home | BakerHostetler

Attorneys contribute representations and warranties chapter to healthcare contracts book

Civil price-fixing case may shed light on whether plaintiffs can win where the DOJ has lost

Four decades after AT&T was broken up, is Google headed down that dark road?

AD Nauseam

AD Nauseam: A Very Special AD Nauseam – Back to School

<figure class="wp-block-image alignright size-large is-resized"><img decoding="async" src="https://ipintelligencereport.bakerhostetlerblogs.com/wp-content/uploads/sites/11/2022/09/Supreme-court-iStock-695120666_1200x630_72dpi-600x315.jpg" alt="United States Supreme Court Building in Washington DC, USA.

extraterritorial reach of U.S. trademark law" class="wp-image-5880" width="428" /></figure>



In a <a href="https://www.ipintelligencereport.com/2022/05/02/supreme-court-calls-for-views-of-solicitor-general-on-petition-involving-international-reach-of-u-s-trademark-law/">May 2022 post</a>, we noted that the Supreme Court called for the views of the Solicitor General on whether to accept review of Abitron Austria GmbH v. Hetronic International, Inc., a case involving the international reach of U.S. trademark law. The issue is whether a U.S. trademark owner can recover damages for infringing sales outside the U.S. to non-U.S. customers. The Tenth Circuit Court of Appeals said yes, if those non-U.S. sales diverted sales that the U.S. trademark owner otherwise would have made.



The Solicitor General <a href="https://www.supremecourt.gov/docket/docketfiles/html/public/21-1043.html" target="_blank" rel="noreferrer noopener">filed a brief last week</a>, disagreeing with the Tenth Circuit’s decision and recommending that the Supreme Court take the case. In the brief, the Solicitor General argues that U.S. trademark law “provide[s] a remedy for a foreign defendant’s use of a plaintiff’s U.S. trademark abroad only if that use is likely to cause confusion in the United States.” The Tenth Circuit’s diversion-of-sales analysis, according to the Solicitor General, allowed the trademark owner to “recover even for sales that were not likely to result in consumer confusion in the United States.” The Solicitor General urged that the Tenth Circuit’s decision “risks globalizing U.S. trademark law, allowing U.S. trademark protection to serve as a springboard for regulating foreign conduct that has no likelihood of affecting consumer perceptions in the United States.”



In light of the Solicitor General’s views and the split between at least the Tenth and Fourth Circuits on the extraterritorial reach of U.S. patent law, the Abitron certiorari petition appears significantly more likely than most petitions to be granted.

core/freeform

IP Intelligence Report

Columbus

Partner

Andrew E. Samuels

Enterprise Issues

Intellectual Property

Solicitor General Recommends that Supreme Court Accept Review of Case Involving Extraterritorial Reach of U.S. Trademark Law

Related Services

Featured Insights