IP Law Daily, TRADEMARK—S.D.N.Y.: Foreign counterfeiters of UNO games liable under Lanham Act, (Nov 1, 2024)

By Kevin M. Finson

The Lanham Act applied to several foreign sellers of counterfeit UNO games even though they did not make sales in the United States because they used the marks at issue in commerce by offering to make sales to purchasers in the United States.

Mattel’s claims against several defendants for sales of counterfeit UNO games were not impermissibly extraterritorial, the U.S. District Court in New York has held. Each defendant offered the counterfeit products for sale in the United States, even if they did not actually make a sale (Mattel, Inc. v. Animefun Store, No. 1:18-cv-08824-LAP (S.D.N.Y. Oct. 30, 2024)).

Mattel, Inc. (Mattel) was the owner of several registered trademarks related to the game UNO. Mattel had brought suit for trademark infringement based on allegations that several foreign companies were selling counterfeit UNO games to purchasers in the United States through online storefronts such as AliExpress.com or DHgate.com.

The court granted summary judgment as to liability and, at a damages hearing, counsel for some of the defendants argued that a claim for damages for sales outside the United States constituted an impermissible, extraterritorial application of the Lanham Act. While the case was pending, the U.S. Supreme Court decided the case of Abitron Austria GmbH v. Hetronic Int’l, Inc., 600 U.S. 412 (2023), which the court found could affect its decision. The court ordered additional briefing on the Abitron issue.

Extraterritoriality. The court found that the claims were not extraterritorial because each of the defendants had used the marks “in commerce” within the United States by offering the products on websites accessible worldwide, pricing the goods in U.S. dollars, and offering to ship the products to the United States. Because it would be “use in commerce,” and therefore a violation of the Lanham Act, to offer a product for sale in the United States even if no sale actually occurred, the fact that two of the defendants did not actually make a sale to a person in the United States did not change their liability under the Lanham Act for offering to make such a sale.

The court granted summary judgment against each defendant and awarded statutory damages.

The Case is No. 1:18-cv-08824-LAP.

Judge: Preska, L.

Attorneys: Danielle S. Futterman (Epstein Drangel LLP) for Mattel, Inc. Shengmao Mu (Whitewood Law PLLC) for Animefun Store.

Companies: Mattel, Inc.; AnimeFun Store; Bingo 1993; Bingoes Hot Toy Factory; Miliy Store; Q374428329

Cases: Trademark NewYorkNews