## Facts

- Vanity Fair Mills, Inc. (VFM), a U.S. manufacturer of women’s underwear, used and held trademark registrations for “Vanity Fair” in the United States (since 1914) and Canada (since 1917).
- T. Eaton Co., Ltd. (Eaton), a Canadian retailer, used “Vanity Fair” in Canada and held a Canadian registration for “Vanity Fair” for women’s clothing dating to 1915.
- Eaton was refused Canadian registration for “Vanity Fair” for women’s underwear in 1919 due to VFM’s prior Canadian registration for that category.
- From about 1945 to 1953, Eaton largely stopped using “Vanity Fair” on its own competing underwear and instead sold VFM’s “Vanity Fair” goods in Canada.
- In 1953, Eaton resumed using “Vanity Fair” on its own lower-priced underwear while continuing to sell VFM’s “Vanity Fair” products in the same Canadian stores.
- VFM alleged Eaton’s conduct constituted trademark infringement and unfair competition in both the United States and Canada, including allegations that Eaton advertised and made sales to U.S. consumers by mail.
- VFM sued in the Southern District of New York under the Lanham Act and related unfair competition theories for U.S. conduct, and also sought relief directed at Eaton’s Canadian conduct.
- The district court dismissed the action, concluding it lacked subject-matter jurisdiction over the Canada-based claims and, alternatively, that Canada was the more appropriate forum; it granted leave to replead U.S.-only claims, but VFM chose to stand on its complaint and appealed.

## Issues

1. Whether the Lanham Act may be applied to enjoin alleged trademark infringement and unfair competition occurring in Canada by a Canadian corporation, particularly where the defendant holds a Canadian trademark registration.
2. Whether the Paris Union Convention creates privately enforceable rights in U.S. courts permitting relief for trademark infringement and unfair competition occurring in a foreign country.
3. Whether the district court properly declined to adjudicate the Canadian-centered dispute on forum non conveniens grounds.
4. Whether the district court erred by dismissing the entire complaint rather than proceeding on the U.S.-based claims alone.

## Decision

- The Second Circuit affirmed dismissal.
- The court held the Lanham Act did not reach the challenged Canadian activities under the circumstances presented, emphasizing the defendant’s foreign citizenship, the predominantly foreign locus of conduct, and the existence of a valid foreign registration creating risk of conflict with Canadian law.
- The court held the Paris Union Convention did not supply a private cause of action in U.S. courts to regulate alleged infringement or unfair competition occurring in Canada.
- The court upheld the district court’s alternative reliance on forum non conveniens as to the Canadian issues.
- The court found no reversible error in dismissing the complaint in full where the plaintiff was given leave to amend to pursue only domestic claims and elected not to do so.

## Legal Principles

- Extraterritorial application of the Lanham Act is limited and generally requires careful attention to: (1) the defendant’s citizenship, (2) the existence of foreign trademark rights or registrations, and (3) the likelihood that U.S. relief would conflict with foreign law or foreign sovereign decisions.
- Where the defendant is foreign, the alleged misconduct occurs abroad, and the defendant holds a valid foreign registration in the country of use, U.S. courts will ordinarily decline to apply the Lanham Act to that foreign conduct due to comity and conflict concerns.
- The Paris Union Convention operates primarily by obligating member states to provide nondiscriminatory protection under their own domestic laws; it does not, by itself, authorize U.S. courts to grant remedies for trademark infringement or unfair competition committed wholly within another member state.
- Forum non conveniens may justify declining to hear claims centered on foreign conduct when evidence, witnesses, governing law, and the regulating sovereign’s interests are predominantly foreign.
- When a complaint commingles domestic and foreign claims and the plaintiff refuses an offered opportunity to replead to isolate domestic claims, dismissal may be affirmed where the plaintiff’s pleading choice prevents manageable adjudication of the domestic components.

## Conclusion

The Second Circuit refused to extend U.S. trademark law or treaty-based theories to police a Canadian registrant’s conduct in Canada, emphasized comity and conflict with foreign trademark regimes, and affirmed dismissal where the plaintiff declined to replead a case limited to domestic claims.


Vanity Fair Mills, Inc. v. T. Eaton Co., 234 F.2d 633 (2d Cir. 1956)