District Court Rejects Effort Under the Lanham Act To Declare Non-U.S. Trademarks Abandoned

The World in U.S. Courts: Spring 2016 - Intellectual Property: Trademark

Fresh Del Monte Produce Inc. v. Del Monte Foods, U.S. District Court for the Southern District of New York, January 31, 2016

The plaintiff and the defendant, which share the "Del Monte" name, were part of the same company until 1989. In that year, the plaintiff broke off to take the Del Monte fresh fruits and produce business, leaving the defendant with the Del Monte canned fruit and vegetables and dried fruit business. As part of the separation, the defendant retained ownership of all Del Monte trademarks worldwide, with the plaintiff granted a perpetual and irrevocable license. In this suit, the plaintiff claimed that the defendant, through inaction, had abandoned the marks worldwide and sought a declaration under the Lanham Act that the marks the plaintiff used had become its property.

The district court in New York concluded that the Lanham Act did not confer jurisdiction to invalidate a non-U.S. trademark. It noted that the Lanham Act had been found to have some extraterritorial effect, but said that any such jurisdiction would stop short of the relief requested—an action it concluded would improperly interfere with a non-U.S. government's right to establish trademarks under its own law. The Court also distinguished the situation where a non-U.S. trademark holder might be able sue in U.S. courts for infringement outside the U.S., concluding that such an action would not unduly interfere with the non-U.S. government's rights to determine the validity of trademarks.

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