The World in U.S. Courts: Summer and Fall 2016 - Intellectual Property – Trademark (Lanham Act) | June.29.2016
The plaintiff, known as Ruger, manufactures a semi-automatic rifle sold worldwide. It sued the defendants, US corporations and a Filipino corporation under the Lanham Act for trade dress infringement and trade dress dilution in connection with a competing firearm sold by the defendants only outside the US. Ruger sought discovery from both the US and the Filipino defendant, including about sales, marketing, and advertising activities by the Filipino defendant. The defendants objected on grounds that information about non-US sales was irrelevant to Ruger’s Lanham Act claim.
The Court stated that the Lanham Act reached non-US activities only where the conduct has a “substantial effect” on US commerce. It found this test potentially satisfied with respect to discovery of the Filipino defendant’s sales, which the Court noted could correspond to losses of sales by Ruger in the US for export. As to the US defendants, the Court noted that a lesser showing of impact on US sales needed to be shown to support a Lanham Act claim. Noting that the US defendants admitted both exporting and importing their products (for resale to Canadian customers), the Court found a sufficient US effect to support discovery.