IP Law Daily, TRADEMARK—9th Cir.: Nature’s Way loses appeal of ‘Nature’s Day’ trademark on U.S. products sold exclusively abroad, (Jul 16, 2025)

By Justin Marcus Smith, J.D.

The court affirmed that Abitron required isolation of DB’s domestic “use in commerce” from non-actionable foreign conduct.

Lanham Act trademark infringement claims did not fail at the extraterritoriality threshold given evidence of product transport to exclusively overseas markets from a U.S. manufacturing point, held the United States Court of Appeals for the Ninth Circuit, in affirming summary judgment for Doctor’s Best, Inc. (DB), in a dispute with Nature’s Way Products (NWP). The district court did not err in applying the Abitron extraterritoriality framework to determine what DB activity was actionable under the Lanham Act. See Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S. 412 (2023). There was also no evidence that U.S. consumers would ever encounter the putatively infringing DB products, to be sold exclusively overseas, in the same sales channel; therefore, no reasonable jury could find a likelihood of confusion. The district court also correctly applied the Sleekcraft factors in concluding that NWP could not show a likelihood of consumer confusion resulting from U.S. transport of DB’s Nature’s Day products for shipment to consumers abroad (Doctor’s Best, Inc. v. Nature’s Way Products, LLC, No. 24-2719 (9th Cir. July 15, 2025)).

Background. DB, a competitor to NWP, sought and obtained the U.S. trademark “Nature’s Day.” DB applied its contested Nature’s Day trademark to nutrition supplements, similar to NWP’s nutrition supplements, which DB manufactured and transported in the U.S. but marketed and sold exclusively to consumers abroad.

In Abitron, the Supreme Court unanimously agreed the Lanham Act does not generally have extraterritorial application; however, four concurring Justices said it would extend its reach to foreign conduct presenting a likelihood of confusion in the U.S.

NWP asserted a counterclaim for trademark infringement under the Lanham Act in response to DB’s complaint for a declaratory judgment of non-infringement. The district court granted summary judgment to DB concluding that NWP failed to raise a genuine issue of material fact that DB’s actionable domestic conduct was likely to cause consumer confusion.

On appeal, NWP argued: (1) the district court misapplied the Abitron extraterritoriality framework; (2) the district court alternatively erred in finding no genuine issue of material fact as to likelihood of consumer confusion; and (3) the district court abused its discretion in denying NWP’s request to defer summary judgment proceedings to permit additional discovery. The Ninth Circuit, applying mainly de novo review, affirmed.

Extraterritoriality. The Ninth Circuit held the district court correctly applied Abitron in granting summary judgment to DB. Abitron required isolation of DB’s domestic “use in commerce” from non-actionable foreign conduct. DB’s conduct abroad was beyond the reach of the Lanham Act, so the court properly limited its inquiry to whether NWP raised a triable issue of fact that DB domestic manufacture and transport activities would cause consumer confusion.

NWP argued the district court erroneously interpreted Abitron as requiring plaintiffs to show a domestic likelihood of confusion. NWP contended any domestic use in commerce would be enough to avoid impermissible application of the Lanham Act to foreign activity, but the Ninth Circuit held that was not quite right. NWP was correct that Abitron did not tie extraterritoriality to likelihood of confusion. Abitron held instead that permissible application hinged on the location of “use in commerce.” But that was the point in this matter: the conduct and any resulting confusion had to be assessed geographically. Conversely, the Abitron majority held that a domestic likelihood of confusion alone could not be the basis for a trademark infringement claim. “Use in commerce” provides the dividing line between foreign and domestic applications of the Lanham Act, and the district court correctly found no likelihood of confusion from DB domestic conduct.

Likelihood of confusion. The district court did not err in finding there was no triable issue of confusion. Abitron did not change the standard for analyzing consumer likelihood of confusion. On the instant facts, transport alone was not likely to cause consumer confusion under the flexible Sleekcraft factors. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979), abrogated in part on other grounds by Mattei, Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003).

The marketing channels used were the key Sleekcraft factor in this matter. Marks may be identical without any confusion if the alleged infringer is in a different geographic area or wholly different industry. In this case, there was no evidence of marketing channel overlap. DB was not selling to consumers in the U.S. whether through e-commerce platforms, websites, or otherwise.

NWP countered that a DB declaration about using e-commerce platforms to sell Nature’s Day products in Asia meant the court must reasonably infer that those channels would be available in the U.S. because websites are generally available worldwide. However, the Ninth Circuit noted the DB declaration also stated that DB categorically does not and does not intend to sell Nature’s Day to U.S. consumers. Even despite the apparent ease with which DB might change its mind, given the English and FDA -required labeling of the Nature’s Day products, as required due to their manufacture in the U.S., NWP could not overcome the intent aspect of the DB declaration by mere speculation. In addition, NWP did not seek to depose a DB witness who contended that the English and FDA labeling was merely used as required and to cultivate trust among foreign consumers. In sum, no reasonable jury could conclude consumer confusion was likely.

The Ninth Circuit otherwise assumed, without deciding, that NWP raised genuine issues of material fact on other Sleekcraft factors, like commercial strength, related goods, and facial similarity of the marks, which it deemed relatively insignificant here. Again, it was unlikely that a consumer would ever encounter both products in a single commercial setting.

Although consumer-facing domestic transport could not support liability on the instant facts, the Ninth Circuit footnoted it did not foreclose the possibility that “there might be unique circumstances where transport alone in the U.S. may possibly cause consumer confusion.”

Rule 56(d). The district court did not abuse its discretion in denying NWP’s Fed. R. Civ. P. 56(d) motion. At the time NWP filed its R. 56(d) motion, the evidence at the center of DB’s motion for summary judgment had been in the record for over five months, with the close of all discovery less than four months away, albeit NWP had not made a single discovery request. NWP also stipulated to a briefing schedule despite not making any effort to elicit facts it believed necessary to oppose summary judgment. The Ninth Circuit accordingly agreed with the district court that NWP did not act diligently.

Concurring opinion. Circuit Judge Ikuta wrote a concurring opinion to clarify that NWP had argued, contrary to Abitron, that as long as there is a domestic use, there can be a Lanham Act violation if there is consumer confusion abroad. Judge Ikuta reasoned that if an offending use must be domestic, it must follow that confusion resulting from it must also be domestic. The possibility of consumer confusion abroad was irrelevant to this case.

Judge Ikuta also rejected the NWP contention that there was any domestic consumer confusion. No record evidence suggested that domestic consumers would see the Nature’s Day mark during transport. As already noted, DB also presented “uncontested evidence” that it was not selling Nature’s Day in the U.S. and that it had no plans to do so.

The Case is No. 24-2719.

Judge: Paez, R.

Attorneys: G. Warren Bleeker (Lewis Roca Rothgerber Christie LLP) for Doctor's Best, Inc. Aaron T. Olejniczak (Andrus Intellectual Property Law, LLP) for Nature's Way Products, LLC.

Companies: Doctor's Best, Inc.; Nature's Way Products, LLC

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