Earlier this month, a California federal court ruled that the well-known U.S.-based company, Gallup Inc., can move forward with its trademark infringement lawsuit against Pakistan Gallup, a company based in (yes, you guessed, it) Pakistan.

Why is this important?  Because it shows that U.S. trademark holders have remedies against foreign companies who sponge off the goodwill of U.S. trademarks.

You probably know Gallup—it's the company that conducts polls throughout the country on various business, political and social topics.  (On December 9, for example, they released a poll concluding that two-thirds of Americans say car company executives deserve a “great deal of blame” for the problems of the U.S. auto industry.  I wonder what the results would have been had those executives traveled to Washington in coach....)

Gallup (USA) holds a federal trademark registration in its name, Gallup.  (Click HERE to see the official record in the United States Patent and Trademark Office).

According to the complaint, Gallup Pakistan conducts opinion polls on political, social and business topics—just like Gallup in the United States.  (See the problem?  No?  Ok, keep reading...) The problem, of course, is that Gallup Pakistan didn't have permission from Gallup (USA)  to use the trademark, "Gallup."

And that's how lawsuits are born.

But here's the rub: normally, you can't sue a foreign company for trademark infringement in the U.S. unless the foreign company is engaged "in commerce" in the U.S. 

According to U.S. law, the term "in commerce" means "all commerce which may be lawfully regulated by Congress." 

So what does that mean?  Hmmmm....let's go to the court decision.....

According to the court's ruling, Gallup Pakistan's infringement occurred "in commerce" because Gallup Pakistan published polls that appeared in the United States, and the company's president appeared in U.S. media outlets to promote his company's poll results.  The court also found that Gallup Pakistan's prominent display of the word "GALLUP" on the company's website infringed Gallup (USA)'s trademark rights.

In the spirit of candor, I think the court stretched the definition of "in commerce" quite a bit to find that Gallup Pakistan engaged in activities that were "in commerce" in the United States.  After all, mere promotion of foreign activity (e.g., going on television to talk about something happening outside of the U.S.) has never been a sufficient ground to find activity "in commerce" in the U.S.  And the fact that the company had a website should be of some, but arguably little, consequence, since a website could be viewed anywhere in the world (i.e., does this mean that Gallup Pakistan could be brought into court wherever the site can be viewed?  I think not....)

My opinion (not that you asked, but after all, it is my blog) is that the court should have focused on the fact that Gallup Pakistan's actions were purposefully directed toward the United States, since the Pakistan company allegedly infringed the trademark of a highly recognizable U.S. company.  In other words, since Pakistan Gallup took the trademark from Gallup (USA), it should have expected that it would be sued in the United States.  This is what we lawyers call "comporting with notions of fair play and justice", which is a fancy (and, if you pay by the word, expensive) way of saying, "what's fair is fair."

When you combine that argument with the other arguments made by the court, I think you have a good case for finding jurisdiction over the Pakistan company.

This is a great ruling for U.S. companies that are having their trademarks ripped off by foreign companies.  If your company fits into this category, call your IP attorney or drop me a line.  You may have a remedy......