No U.S. Jurisdiction Where Trademark Claim Brought By Non-U.S. Citizen and Trademark Was Not Registered in U.S.

The World in U.S. Courts: Fall 2013 - Intellectual Property (IP)

Gelicity U.K. Ltd. v. Jell-E-Bath, Inc., 2013 U.S. Dist. LEXIS 92236 (E.D.N.Y. July 1, 2013)

Gelicity is a U.K. company that sells bath products under the name GELLI BAFF, subject to an intent-to-use trademark application in the U.S. Jell-E-Bath is an Oregon company that sells home spa treatments in the U.S. under the JELLYBATH trademark. Gelicity filed a declaratory suit for non-infringement and Jell-E-Bath filed a counterclaim for infringement.

Gelicity moved to dismiss Jell-E-Bath’s infringement claim on jurisdictional grounds. The trial court agreed, concluding that Jell-E-Bath had failed to sufficiently allege that “Gelicity . . .—who are United Kingdom domiciliaries—sold, transported, or advertised goods with the allegedly infringing mark in the United States.” The court went on to apply the three-factor Second Circuit test for extraterritorial application of the Lanham Act set forth in Vanity Fair Mills v. T. Eaton Co., 234 F.2d 633 (2d Cir. 1956) and concluded that: (1) Gelicity is a U.K., not a U.S., citizen; and (2) that because Gelicity had registered its mark in the U.K., there were sufficient questions as to whether the U.S. should proceed in exercising jurisdiction over this matter that could be left to a foreign court. Since the absence of two Vanity Fair factors was “fatal,” the court did not reach the third factor, which considers whether there is substantial effect on U.S. commerce. The court dismissed the infringement counterclaims.

However, Jell-E-Bath offered to amend to add specific allegations of Gelicity’s use in commerce in the U.S., so the court granted leave to amend.

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