Trademarks – Extraterritorial Application of the Lanham Act

Plaintiff, an American corporation, had manufactured and sold women’s undergarments in the United States and Canada since 1917, under a U.S. registered trademark, “Vanity Fair.” Defendant, a Canadian corporation, had registered the same trademark in Canada in 1915, and for this reason plaintiff’s application for a Canadian trademark was denied in 1919. From 1945 to 1953, defendant purchased plaintiff’s trademarked goods for resale in Canada. In 1953, defendant began selling goods of Canadian manufacture with its own Vanity Fair trademark, and threatened its competitors in Canada with infringement suits if they continued to sell plaintiff’s trademarked goods. In an action brought in the United States District Court for the Southern District of New York, plaintiff sought an injunction against defendant’s use of the trademark “Vanity Fair,” claiming that defendant’s Canadian sales constituted trademark infringement and unfair competition under both the Lanham Act and the International Convention for the Protection of Industrial Property. The district court dismissed for lack of federal question jurisdiction over the alleged infringement and unfair competition occurring in Canada.8 On appeal to the Court of Appeals for the Second Circuit, held, affirmed. Neither the Lanham Act, providing infringement remedies to trademark owners, nor the International Convention for the Protection of Industrial Property, providing for protection of trade names in signatory countries, apply to the acts of a foreign national in his home country, where the acts are done under a presumably valid trademark registration in that country. Vanity Fair Mills v. T. Eaton Co., (2d Cir. 1956) 234 F. (2d) 633, cert. den. 352 U.S. 871 (1956).