A recent decision from the federal district court in Delaware highlights an important difference between trademark registrations and trademark infringement, potentially giving trademark holders a step ahead in enforcement (read it here).New Balance, the maker of athletic shoes and apparel, sued a Chinese company that was advertising “New Bunren” shoes on the internet. The relative similarities of the company names aside (the actual marks-in-suit were logos), New Bunren defended in part on the grounds that while it admitted the advertising, it had not yet sold or shipped any product into stores in the United States.

Immaterial, ruled Judge Maryellen Noreika, advertising alone was sufficient to create infringement, along with the surprising finding that this issue had never been addressed in the Third Circuit.

The construction and definitions section of the Lanham Act 15 U.S.C. 1127 opens with a somewhat cryptic note: “In the construction of this chapter, unless the contrary is plainly apparent from the context….” It goes on, many lines below, to define “use in commerce” as occurring when “goods are sold or transported in commerce.” This is the standard used when certifying “use in commerce” or “actual use” when applying for a trademark. But Section 1114 (“infringement”) includes “advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services…” and Section 1125 (“false descriptions”) includes “advertising or promotion” as infringing activities.

Citing cases from the Second Circuit and elsewhere that the court found persuasive, because the earlier sections were specifically addressing infringements and remedies, the “context” therefore required that the standards of Section 1114 and 1125, and not the “use in commerce” definition of Section 1127 should apply to “use in commerce” in the context of infringement. Therefore, advertising, while not “use in commerce” to register a mark, can be grounds for infringement of an already registered mark.

The Business Take Away: With overseas infringers seemingly moving at top speed, trademark owners need every time advantage they can get to enforce their marks, either through the courts, or perhaps a Federal Trade Commission action. This may help. It appears, at least in these jurisdictions, that a trademark owner does not have to wait for actual goods to land in America. If the infringers are advertising from abroad, that can crate the necessary jurisdiction to enforce the mark.

New Balance Athletics, Inc. v. USA New Bunren International Co. Limited LLC 1:17-cv-01700 (D.Del.)