On My Mind Blog

The first user of a mark for particular goods or services has superior rights against a subsequent user of the same or similar mark for any goods or services that purchasers might reasonably expect to be within the normal expansion of its business.

But can the first user register its mark for goods or services in its zone of natural expansion after an intervening user has used the same or a similar mark for those goods or services?

The U.S. Court of Appeals for the Second Circuit (Second Circuit) determined that a Chinese company whose websites offered counterfeit goods to New York residents was subject to personal jurisdiction in New York federal court even though the seller did not deliver those goods to New York purchasers.  The seller had confirmed the orders from New York purchasers and had accepted payments for those purchases before being sued for counterfeiting and trademark infringement.  After the suit commenced, the seller cancelled the orders and refunded the payments.