In an opinion today, Judge Rakoff dismissed a case in which a company holding a perpetual license to the “Del Monte” trademarks for fresh fruits a vegetables alleged that the nominal owner had abandoned all foreign trademarks, so as to render them invalid under the Lanham Act. Although there are various instances in which the Lanham Act can apply outside the U.S., Judge Rakoff ruled that it would be “grossly intrusive” for the Lanham Act to go so far as to render foreign trademarks invalid:
The parties do not dispute that in certain circumstances the Lanham Act may have extraterritorial application. . . . But it does not follow that, just because Congress has authorized extraterritorial application of the Lanham Act as a general matter, that Act can be applied extraterritorially to determine the validity of trademarks that are wholly the creation of foreign law.
Here, the Court concludes, as a matter of law, that the Lanham Act may not be applied extraterritorially to adjudicate the validity or ownership status of foreign trademarks. This is because it is firmly settled that “[a] trademark has a separate legal existence under each country’s laws, and trademark rights exist in each country solely according to that nation’s laws.” . . . .[I]t would be grossly intrusive for a United States court to utilize the Lanham Act to declare trademarks registered by a foreign government under foreign law abandoned and owned by some other entity.