Metropolitan News-Enterprise

 

Wednesday, July 16, 2025

 

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Ninth Circuit:

Mark Only ‘Hypothetically Confusable’ Isn’t an Infringement

Opinion Says Requisite Consumer Puzzlement Was Not Established Where Products, in Alleged Violation of Lanham Act,  Are Only Marketed in Asia Even if They Are Made in, and Transported Within, United States

 

By Kimber Cooley, associate editor

 

Depicted above, left,  is a trademark owned by Nature’s Way Products LLC; at right is a screenshot from the company’s counterclaim against Doctor’s Best Inc. over the intended use of the “Nature’s Day” label. The Ninth U.S. Circuit Court of Appeals yesterday affirmed a judgment in favor of Doctor’s Best, finding no infringement.

 

The Ninth U.S. Circuit Court of Appeals held yesterday that a nutritional company was entitled to summary judgment on its claim seeking a declaration of non-infringement, and on a counterclaim filed by a competitor asserting a violation of the Lanham Act, as to a new line of products branded as “Nature’s Day” supplements where the products were manufactured and transported in the U.S. but exclusively marketed and sold in Asia.

At issue is the scope of the June 2023 U.S. Supreme Court decision in Abitron Austria GmbH v. Hetronic International Inc. which held that trademark infringement provisions of the Lanham Act are not extraterritorial and extend only to claims of domestic use.

In yesterday’s opinion, Senior Circuit Judge Richard A. Paez said that the domestic transportation of the products was sufficient “domestic use” under the act, but wrote:

“Because there is no genuine issue of material fact that (1) Nature’s Way and Nature’s Day products are not advertised or sold in overlapping marketing channels and (2) there is not a strong possibility that they will be in the future, it is unlikely that a consumer will ever encounter both products in a single commercial setting. Therefore, although the marks are hypothetically confusable, the likelihood of consumer confusion, given the existing record, is nonexistent, because the marks do not appear in the same marketplace.”

Nutritional Products

Challenging the use of the label was Nature’s Way Products LLC (“NWP”), a company that has marketed and sold nutritional products under its “Nature’s Way” mark in the U.S. since 1969. After a Tustin-based competitor, Doctor’s Best Inc., filed an application with the U.S. Patent and Trademark Office for the “Nature’s Day” brand, NWP presented a cease-and-desist letter.

Doctor’s Best (referred to in the opinion as “DB”) responded by filing a federal complaint in May 2023, seeking a declaratory judgment of non-infringement. NWP counterclaimed for violating provisions of the Lanham Act, found at 15 U.S.C. §1051 et seq.

NWP specifically asserted that Doctor’s Best use of the “Nature’s Day” mark constitutes trademark infringement under 15 U.S.C. §§1114(1)(a) and 1125(a)(1), which provide for civil liability for the “use in commerce” of copies or imitations of registered marks, or of names, symbols or devices, that are likely to cause consumer confusion.

After Doctor’s Best filed a motion for summary judgment, District Court Judge Kenly Kiya Kato of the Central District of California cited Abitron and found that Doctor’s Best’s domestic conduct was “limited to manufacturing…and transporting its Nature’s Day branded supplements” and that such conduct was unlikely to cause consumer confusion.

Yesterday’s opinion, joined in by Circuit Judge Ryan D. Nelson, affirmed the judgment. Circuit Judge Sandra S. Ikuta concurred in the judgment but wrote separately to outline her views on the likelihood of consumer confusion in cases where the only domestic use asserted is transportation in the U.S.

Abitron Case

Paez addressed the extraterritoriality question, remarking:

“The district court correctly applied Abitron in granting summary judgment to DB. Abitron required the district court to isolate DB’s domestic ‘use in commerce’ of the Nature’s Day mark from its non-actionable foreign conduct….Because DB’s conduct abroad is beyond the scope of the Lanham Act, the court properly cabined its inquiry to whether NWP had raised a triable factual dispute that DB’s domestic activities—manufacturing, bottling, labeling, and transporting in commerce Nature’s Day supplements—were likely to cause consumer confusion.”

Rejecting NWP’s assertion that Kato wrongly interpreted the case as requiring a plaintiff to show a domestic “likelihood of confusion” rather than an in-country “use in commerce,” Paez opined:

“NWP is correct that Abitron did not tether the extraterritoriality analysis to the likelihood of confusion element of a trademark infringement claim, and held instead that a permissible, non-extraterritorial application hinges on the location of the ‘use in commerce.’…Abitron’s territorial limitation on the trademark infringement provisions of the Lanham Act, however, necessarily narrows the conduct a factfinder may look to in analyzing the likelihood of confusion, by limiting the geographic scope of conduct capable of supporting a claim.”

Likelihood of Confusion

As to whether Doctor’s Best’s use of the Nature’s Day labels in domestic transportation of its products is likely to cause confusion, the judge said that courts are to “flexibly” analyze a set of non-exhaustive factors, such as intent, the strength and similarities of the marks, the proximity or relatedness of the goods, and the likelihood of expansion of product lines.

Applying this framework, the judge remarked that “[h]ere, the factor most pertinent in determining the likelihood of consumer confusion is the marketing channels used,” and pointed out that even if the alleged infringer’s mark is identical to that of the complainant, there can be no consumer confusion if the infringer is in a different geographic area or in a wholly different industry.

He opined that the “Nature’s Way” and “Nature’s Day” products are not marketed and sold in overlapping channels where NWP sells its goods across all 50 states while Doctor’s Best does not sell its supplements “to consumers on U.S. soil or through U.S. e-commerce platforms.”

NWP pointed to admissions by Doctor’s Best’s executives that the company intends to use online platforms to sell the “Nature’s Day” products in Asia, with English labels and U.S.-compliant safety warnings, saying that it is reasonable to infer that domestic consumers could access the goods as “websites are generally available worldwide.”

Unpersuaded by these assertions, Paez said:

 “NWP may not create a dispute…with assertions of ‘mere speculation.’ ”

English Labels

Noting that Doctor’s Best explained that it uses English labels because U.S. products are perceived internationally as being of high quality, he added:

“NWP points to the uncontested evidence that DB manufactures Nature’s Day products in the U.S., is seeking a U.S. trademark registration, and the products are labelled in English with the disclaimers required by U.S. law. While these facts support the inference that DB could easily begin selling Nature’s Day products in the U.S., a rational jury could not find a strong possibility of expansion into the U.S. market given DB’s undisputed evidence of its foreign marketing and business intentions.”

In a footnote, the judge clarified:

“Although the non-consumer-facing domestic transport ultimately cannot support liability here, we do not foreclose the possibility that there may be unique circumstances where transport alone in the U.S. may possibly cause consumer confusion.”

Ikuta’s View

Specially concurring in the judgment, Ikuta wrote separately to “to provide my understanding regarding the application of Abitron…and the likelihood of domestic consumer confusion.”

She said:

“For a Lanham Act claim to be actionable, the offending use must occur domestically….Because the offending use must be domestic, it follows that the consumer confusion resulting from this use likewise must be domestic….That is, the Lanham Act only applies where there is a domestic use in commerce that would cause a domestic likelihood of confusion. Accordingly, the possibility of consumer confusion based on marketing or sales abroad is irrelevant to this case.”

The case is Doctor’s Best Inc. v. Nature’s Way Products LLC, 24-2719.Copyright 2025, Metropolitan News Company