The Story of Steele v. Bulova : Trademarks on the Line

This paper discusses the story behind the leading U.S. Supreme Court case, Steele v Bulova Watch Co., 344 U.S. 280 (1952). In Steele, the Supreme Court decided that in limited circumstances rights under the U.S. Lanham Act (the U.S. federal trademark statute) could reach conduct beyond the U.S. borders – in this case, passing off in Mexico. The case has spawned a complex jurisprudence in circuit courts as to the extraterritorial reach of domestic U.S. trademark law. This paper traces the history of the case, drawing on memoirs of the counsel involved and the transcripts of the trial. As the paper discusses, the dispute exposed a fundamental tension in trademark doctrines. While trademark rights are formalistically territorial, the strength and salience of trademarks depend on consumers' impressions, and neither consumers themselves nor the stimuli that generate their impressions of brands are tethered within domestic borders. In the late 1940s and early 1950s, when Bulova was litigated, this was especially true of the area around San Antonio, Texas, where the defendant started a business that expanded into Mexico – a business that the Bulova Watch company alleged infringed its valuable trademarks on both sides of the border. These tensions continue to arise today as a result of cross-border networks that enable firms instantly to reach consumers across the globe