1:18-cv-08824
S.D.N.Y.Oct 30, 2024Background
- Mattel, owner of the UNO trademark, sued several Chinese-based online merchants (the "Wang Defendants") for selling counterfeit UNO products through online marketplaces (AliExpress, DHgate) to U.S. and foreign consumers.
- The defendants were not authorized by Mattel to use or sell products bearing the UNO mark; the counterfeit goods were virtually indistinguishable from genuine Mattel UNO products.
- Mattel demonstrated that the infringing products were marketed to U.S. consumers, with many sales made to buyers in the United States, including New York.
- A temporary restraining order and preliminary injunction were entered; the court previously granted summary judgment against the Wang Defendants for trademark infringement, false designation of origin, and unfair competition.
- During the remedies phase, the U.S. Supreme Court decided Abitron Austria GmbH v. Hetronic Int’l, clarifying the Lanham Act's extraterritorial reach, and the district court requested further briefing on this issue.
- The Wang Defendants did not respond to recent filings or participate in supplemental briefing.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Lanham Act applies to the Wang Defendants' sales and offers to U.S. and foreign customers | The Wang Defendants' conduct (sales/offers/advertising) constitutes "use in commerce" in the U.S., so Lanham Act applies | Argue that Lanham Act does not apply extraterritorially to foreign sales | Lanham Act applies—"use in commerce" occurred in the U.S. for all defendants |
| Whether the infringement was willful, supporting enhanced statutory damages | Defendants knowingly or recklessly sold counterfeit goods, as evidenced by product similarities and lack of authorization | No explicit contrary argument; claimed inability to discern counterfeits | Willfulness established; statutory damages appropriate |
| Whether Mattel is entitled to injunctive relief | Risk of ongoing harm and loss of trademark control justifies permanent injunction | No assurances of ceasing infringing conduct; no response | Permanent injunction granted to prevent further infringement |
| Whether Mattel is entitled to attorney’s fees | Willful infringement should support attorney's fees as an exceptional case | No explicit argument; no response | No attorney’s fees awarded; not an "exceptional" case under Octane Fitness |
Key Cases Cited
- Abitron Austria GmbH v. Hetronic Int’l, 600 U.S. 412 (2023) (Lanham Act is not extraterritorial; applies only to domestic "use in commerce")
- Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014) (sets the standard for when attorney's fees are available in "exceptional cases" under fee-shifting statutes)
- eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006) (sets four-factor test for granting permanent injunctions)