Blog Banner Image

The Franchise Memorandum

Court Rejects Extraterritorial Application of Lanham Act
Posted in Trademarks

A United States District Court in California last month dismissed Pinkberry’s case against parties who registered the trademark “Pinkberry” in Japan, concluding the Lanham Act did not extend to defendants’ activities outside the United States. Pinkberry, Inc., et al., v. JEC International Corp., et al., 2011 U.S. Dist. LEXIS 140669 (C.D. Cal. Dec. 7, 2011). The defendants registered the trademark at issue in Japan but never used it. After unsuccessfully attempting to purchase the right to the trademark from defendants, Pinkberry initiated a proceeding in Japan to cancel defendants’ registration of the mark and, while that proceeding was still pending, it filed suit in California under the Lanham Act.  

For the Lanham Act to apply extraterritorially, (1) the alleged violations must create some effect on American foreign commerce, (2) the plaintiff must suffer a cognizable injury, and (3) the interests of and links to U.S. foreign commerce must be sufficiently strong in relation to those of other nations to justify an assertion of extraterritorial authority. Pinkberry satisfied the first two elements because the defendants acted from within the United States and effectively precluded Pinkberry from entering the Japanese market, causing it harm. Pinkberry failed to satisfy the third element, however, primarily because the dispute between the parties had a relatively greater effect on foreign countries than on the United States.

Email LinkedIn Twitter Facebook

The information contained in this post is provided to alert you to legal developments and should not be considered legal advice. It is not intended to and does not create an attorney-client relationship. Specific questions about how this information affects your particular situation should be addressed to one of the individuals listed. No representations or warranties are made with respect to this information, including, without limitation, as to its completeness, timeliness, or accuracy, and Lathrop GPM shall not be liable for any decision made in connection with the information. The choice of a lawyer is an important decision and should not be based solely on advertisements.

About this Publication

The Franchise Memorandum is a collection of postings on summaries of recent legal developments of interest to franchisors brought to you by Lathrop GPM LLP. 

To subscribe to monthly emails for The Franchise Memorandum, please click here


















Blog Authors