In a May 2022 post, 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 filed a brief last week, 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.

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